IPL Commercial Law Reviewer

INTELLECTUAL PROPERY CODE (R.A. No. 8293, effective January 1, 1998) INTELLECTUAL PROPERY

-those property rights which results from the physical manifestation of an original thought.) COVERAGE – Intellectual property rights consists of: a) Copyrights and related rights; b) Trademarks and service marks; c) Geographic indications; d) Industrial designs; e) Patents; f) Layout-designs (Topographies) of Integrated Circuits; and g) Protection of Undisclosed Information. (Sec. 4) STATE POLICY IN RESPECT OF INTELLECTUAL PROPERTY RIGHTS (IPR) -There is a declaration of State Policy that, among others, the State recognizes that an effective intellectual and industrial property system is vital to the development of domestic and creative activity, facilitates transfer of technology, attracts foreign investments and ensures market access for our products, hence it shall protect and secure exclusive rights of scientists, inventors, artists, and other gifted citizens to their intellectual property and creations. (Sec. 2) INTERNATIONAL CONVENTION AND RECIPROTICY • Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which 1) is a party to any convention, treaty, or agreement relating to intellectual property rights or the repression of unfair competition to which the Philippines is also a party, or 2) extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty, or reciprocal law, in addition to the rights to which any owner of an intellectual property rights is otherwise provided by law. (Sec. 3) REVERSE RECIPROCITY OF FOREIGN LAWS Section 231 – making enforceable on nationals of a foreign state all conditions, restrictions, limitations, diminutions, requirements or penalties that may be imposed by such foreign state on a Filipino national seeking intellectual property protection.  Reciprocal application is not automatic Rather, the Phils. may apply to the foreign national those restrictions that his country imposes on Filipino applicants What are “TECHNOLOGY TRANSFER ARRANGEMENTS”? -contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market. (Sec. 4)

PRESCRIPTIVE PERIOD OF ACTIONS FOR DAMAGES UNDER THE IPC -No damages may be recovered after four (4) years from the time the cause of action arose (Sec. 226) JURISDICTION OVER DISPUTES UNDER IPC

A. Original Jurisdiction 1) Director General (IPO) -has original jurisdiction to resolve disputes relating to the terms of a license involving the author’s right to public performance or other communication of his work. 2) Bureau of Legal Affairs -has jurisdiction over the ff: i. Opposition to applications for registration of marks; ii. Cancellation of trademarks; iii. Cancellation of patents, utility models and industrial designs; iv. Petition for compulsory licensing of patents; v. Administrative Complaints for violations of laws involving IPR where the total damages claimed is not less than P200,000.00 3) Documentation, Information and Technology Transfer Bureau -has jurisdiction to settle disputes involving technology transfer payments B. Appellate Jurisdiction 1) Director General -over all decisions rendered by the ff: • Dir. of Legal Affairs • Dir. of Patents • Dir. of Trademarks • Dir. of the Documentation, Information and Technology Transfer 2) Court of Appeals -over decisions of the Director General in the exercise of his appellate jurisdiction over the decisions of the: • Dir. of Legal Affairs • Dir. of Patents • Dir. of Trademarks 3) Secretary of Trade and Industry -over decisions of the Director General on the exercise of his appellate jurisdiction of the Director of Documentation, Information and Technology Transfer; AND -over decisions of the Director General in the exercise of his original jurisdiction relating to the terms of license involving the author’s right. ADMINISTRATIVE PENALTIES IMPOSED FOR VIOLATIONS OF LAWS INVOLVING IPR -The Director for Legal Affairs may impose the ff: a) Issuance of a cease and desist order (CDO); b) Acceptance of voluntary assurance compliance (VAC) or voluntary assurance of discontinuance (VAD); c) Condemnation or seizure of products subject of the offense; d) Forfeiture of properties used in the commission of the offense; e) Imposition of administrative fines; f) Cancellation of permit, license, authority or registration; g) Withholding of permit, license, authority or registration; h) Assessment of damages; i) Censure; j) Analogous penalties or sanctions (Sec. 10.2 [b]) LAW ON PATENTS PATENT – an exclusive right acquired over an invention, to sell, use, and make the same whether for commerce or industry.

PATENTABLE INVENTIONS -any technical solution of a problem in any field of human activity which is NEW, involves an INVENTIVE STEP and is INDUSTRIALLY APPLICABLE shall be patentable. The patentable invention may be, or may relate to, a product, or process, or an improvement of any of the foregoing. (Sec. 21) Requirements: 1) Technical solution of a problem in any field of human activity 2) Novelty – that which does not form part of a prior art consists of: a) that which has been made available to the public anywhere in the world before the filing date or the priority date of the application b) that which forms part of an application whether for patent, utility or industrial design, effective in the Philippines, provided that: i. the inventors or applicants are not the same ii. the contents of the application are published in accordance with the requirements of patent application rules. iii. the filing date of the prior art is earlier.

3) Inventiveness/Inventive Step -an invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art of the time of the filing date or priority date of the application claiming the invention. (Sec. 26) 4) Industrial Applicability -an invention that can be produced and used in any industry. (Sec. 27) NON-PATENTABLE INVENTIONS The following shall be excluded from patent protection: a) Discoveries, Scientific Theories and Mathematical Methods; b) Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computer; c) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body; d) Plant varieties or animal breeds of essentially biological process for the production of plants or animals; e) Aesthetic creations; f) Anything which is contrary to public order or morality (Sec. 22)

RIGHT TO A PATENT The right to a patent belongs: a) to the inventor, his heirs, or assigns b) when 2 or more persons have made the invention separately and independently – to them jointly c) if two (2) or more persons have made the invention separately and independently of each other – to the person who filed an application for such invention (FIRST TO FILE RULE) d) where 2 or more applications are filed for the same invention – to the applicant who has the earliest filing date or the earliest priority date (FIRST TO FILE RULE) (Sec. 29) e) in case of inventions created pursuant to a commission – to the person who commissions the work UNLESS agreed otherwise. f) in case an employee made the invention in the course of his employment, the patent shall belong to: • the employee – if invention not part of his regular duties even if he uses the time, facilities and materials of the employer; OR • the employer – if the invention is the result of the performance of his regularly assigned duties unless agreed otherwise.

RIGHTS ACQUIRED BY THE PATENTEE The patentee acquires the following rights under his patent a) Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product; b) Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using or offering for sale, or importing any product obtained directly or indirectly from such process; c) to assign, or transfer by succession the patent, and to conclude licensing contracts for the same (Sec. 71) CONTENTS OF PATENT APPLICATION A patent application shall contain: 1) a request for the grant of patent; 2) a description of the invention; -the disclosure of the invention must be in a manner sufficiently clear and complete for it to be carried out by a skilled in the art. 3) Drawings necessary for the understanding of the invention; 4) One or more claims 5) An abstract (Sec. 32)  must contain relevant information as to the identity of the person (no anonymous person)  if the applicant is not the inventor; he must show proof of authority to seek application for registration UNITY OF INVENTION -every application for patent registration must contain an application over a simple invention or several inventions but must form part of a single general inventive concept PROCEDURE FOR THE GRANT OF PARENT a) According a filing date to the application (Sec. 41); b) Examination of compliance by applicant with the formal requirements specified in Sec. 32, i.e., contents of application (Sec. 42); c) Classification of application and search for prior art (Sec. 43) d) Publication of patent application in the IPO Gazette (Sec. 44); e) Inspection of the application documents by any interested party and written observations by any third party concerning the patentability of the invention (Secs. 44.2 and 47); f) Written request by the applicant, within 6 months from the date of publication of his patent application, for the substantive examination by the IPO of his application. (Sec 48); g) Grant of the patent (Sec. 50), or refusal of the examiner to grant the patent (Sec. 51); in the latter case, the refusal may be appealed to the Director of the Bureau of Patents; h) Publication of the grant of patent in the IPO Gazette (Sec. 52) TERM OF A PATENT, UTILITY MODEL, INDUSTRIAL DESIGN a) Patent – 20 yrs from the filing date of application, without renewal b) Utility model – 7 yrs, w/out renewal c) Industrial design – 5 yrs, renewable twice UTILITY MODELS -models of implement or tools of any industrial product even if not possessed of the quality of invention but which is of “practical utility” INDUSTRIAL DESIGN -any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors provided that such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft.

CANCELLATION OF PATENTS Who may file? • any person • IPO motu proprio Grounds: a) That the patent is invalid (Sec. 81); b) That what is claimed as the invention is not new or patentable; c) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or d) That the patent is contrary to public order or morality. (Sec. 61) e) failure to make payments of annual fees or dues Where to file? • BLA – if in violation of IPC (administrative) • RTC – otherwise INFRINGEMENT -the making, using, offering for sale, selling or importing a patented product or a product obtained directly or indirectly from a patented process or the use of a patented process without the authorization of the patentee. (Sec. 76) TEST OF PATENT INFRINGEMENT 1) Literal Infringement – resort is had to the “words” of the claim. 2) Doctrine of Equivalents – if two devices do the same work in substantially the same way, the same result, and produce substantially the same result, they are the same even though they differ in name, form, or shape. REMEDIES IN CASE OF INFRINGEMENT A) File civil case for the following purposes: 1) To recover from the infringer such damages as the court may award considering the circumstances of the case provided it shall not exceed 3 times the amount of the actual damages sustained plus attorney’s fees and other expenses of litigation; 2) To secure an injunction for the protection of his rights; 3) To receive a reasonable royalty, if the damages are inadequate or cannot be readily ascertained with reasonable certainty; 4) To have the infringing goods, materials and implements predominantly used in the infringement disposed of outside the channels of commerce, or destroyed without compensation; 5) To hold the contributory infringer jointly and severally liable with the infringer. B) File criminal case within 3 years from date of commission of the crime for repetition of infringement (Sec. 84) LAW ON TRADEMARKS TRADEMARK – anything which is adopted and used to identify the source of origin of goods, and which is capable of distinguishing them from goods emanating from a competitor SERVICE MARK – distinguishes the services of an enterprise from the service of other enterprises. It performs for services what a trademark does for goods. COLLECTIVE MARK - any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods and services of different enterprises which use the sign under the control of the registered owner of the collective mark (Sec. 121.2)

TRADE NAMES – the person (whether natural or juridical) who does business and produces the goods or the services is designated by a trade name. -Under the law, there is no need to register trade names in order to secure protection for them. TRADE DRESS – involves the total image of a product, including such features as size, shape, color or color combinations, texture, and/or graphics. HOW MARKS ARE ACQUIRED -Under RA 8293, the rights in a mark shall be acquired through registration made validly in accordance with its provisions. (Sec. 122) -This proposition of law, however, may not be converted for it is not true that where there is no registration, there is no protection. • Acquisition through use -Whether or not a registered trademark is employed, when a person has identified in the mind of the public the goods he manufactures or deals in his business or services from those of others, such a person has a property right in the goodwill of said goods or services which will be protected in the same manner as other property rights (Sec. 168.1) RIGHTS CONFERRED -the owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. (Sec. 147) DURATION -the certificate of registration of a trademark shall be ten (10) years from the filing date of application provided the registrant shall file a declaration of actual use within a year from the 5th anniversary of registration date (Sec. 145) -renewable for another 10 yrs. (Sec. 146) NON-REGISTRABLE TRADEMARKS, TRADE NAMES AND SERVICE MARK A mark cannot be registered if it: a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the window; d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The same gods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion; e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: provided, that in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the

Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: provided, that use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered trademark: Provided further that the interests of the owner of the registered mark are likely to be damaged by such use; g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in a bonafide and established trade practice; j) Consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; l) Consists of color alone, unless defined by a given form; or m) Is contrary to public order or morality (Sec. 123) FILING DATE OF AN APPLICATION -The filing date of an application shall be the date on which the office received the following indications and elements in English or Filipino: a) An express or implicit indication that the registration of a mark is sought; b) Indications sufficient to contact the applicant or his representative, if any; c) Indications sufficient to contact the applicant or his representative, if any; d) A reproduction of the mark where registration is sought; and e) The list of the goods or services for which the registration is sought. (Sec. 127.1)  NO filing date shall be accorded until the required fee is paid (Sec. 127.2) PROCEDURE FOR REGISTRATION a) Examination to determine whether the application satisfies the requirements for the grant of a filing date. b) Examination to determine whether the application meets the requirements of Sec. 124 and the mark is registrable under Sec. 123. c) Denial of the application or amendment thereof or publication of the application; d) Opposition to the application; notice; hearing; decision by examiner; appeal to the Director of Bureau of Trademarks; appeal to the IPO Director General; appeal to the CA; e) Issuance of Certificate of registration f) Publication in the IPO Gazette of the fact of registration CANCELLATION OF TRADEMARK OR TRADENAME Who may file? • any person who believes that he is and will be damaged by the registration of a mark Where to file? • BLA Grounds: a) Mark becomes generic for goods for which it is registered; b) Abandonment of the mark; c) Registration obtained fraudulently or contrary to provisions of RA 8293; d) Mark used by, or with permission, or, registrant; e) Failure to use the mark within the Philippines for 3 uninterrupted years or longer. EFFECTS OF NON-USE • may be excused if caused by circumstances arising independently of the will of the trademark owner, such as military coup, or political changes that impede commerce

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Registration is an administrative act declaratory of a pre-existing right that does not, of itself, perfect a trademark, for what does is actual use Non-use is a ground for removing a mark from the register

DOCTRINE OF SECONDARY MEANING -While a generic, indicative or descriptive mark will, as a general rule, be denied registration, there is a circumstance that will allow it to be registered. Under the doctrine of secondary meaning, when a mark has become distinctive of the applicant’s gods in commerce and, in the mind of the public, indicates a single source of consumers, it may be registered. WHAT CONSTITUTES AN INFRINGEMENT -Under RA 8293, any person shall, without the consent of the owner of the registered mark: 1) Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or 2) Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on, or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable for infringement. (Sec. 155) TEST OF TRADEMARK INFRINGEMENT 1) Dominancy Test – consists in seeking out the main, essential or dominant features of a mark. 2) Holistic Test – takes stock of the other features of a mark, taking into consideration the entirety of the marks. DIFFERENTIATED FROM UNFAIR COMPETITION 1) Cause of action: in infringement, the cause of action is the unauthorized use of a registered trademark; in unfair competition, it is the passing off of one’s goods as those of another merchant. 2) Fraudulent intent is not necessary in infringement, but necessary in UC. 3) Registration of trademarks: in infringement, it is a pre-requisite; in UC, it is not required. 4) Class of goods involved: in infringement, the goods must be of similar class; in UC, the goods need not be of the same class.  infringement is a form of unfair competition REMEDIES AVAILABLE IN CASE OF INFRINGEMENT OF A REGISTERED MARK a) Sue for damages (Sec. 156.1); b) Have the infringing goods impounded (Sec. 156.2); c) Ask for double damages (Sec. 156.3) d) Ask for injunction (156.4) e) Have the infringing goods disposed of outside the channels of commerce (Sec. 157.1) f) Have the infringing goods destroyed (Sec. 157.1) g) File criminal action (Sec. 170); h) Administrative Sanctions UNFAIR COMPETITION -any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business,

or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition. How Committed a) Making one’s goods appear as the goods of another; b) Use of artifice or device to induce the false belief that one’s goods are those of another; c) False statements in the course of trade; or d) Any act contrary to good faith calculated to discredit another’s goods TEST OF UNFAIR COMPETITION -The test is whether certain goods have been clothed with an appearance likely to deceive the ordinary purchaser exercising ordinary care. REMEDIES AGAINST UNFAIR COMPETITION a) Damages which may either be: • reasonable profit which would have realized, or • actual profits collected by the defendant, or • a certain percentage over the gross sales of defendant in case of the measure of damages cannot be readily ascertained; b) Damages may be doubled in cases where actual intent to mislead the public or to defraud the complaint is shown; c) Impounding of sales invoices and other documents evidencing sales; d) Injunction e) Destruction of goods found to be infringing, and all paraphernalia.

LAW ON COPYRIGHT COPYRIGHT – system of legal protection an author enjoys in the form of expression of ideas BASIC PRINCIPLES • Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as their content, quality or purpose (Sec. 172.2) • Protection extends only to the expression of the idea, not to the idea itself or to any procedure, system, method or operation, concept or principle, discovery or mere data. CREATION OF A WORK A copyright work is created when the two(2) requirements are met: 1) Originality – does not mean novelty or ingenuity, neither uniqueness nor creativity. It simply means that the work “owes its origin to the author” 2) Expression – there must be “fixation” To be “fixed”, a work must be embodied in a medium sufficiently: • permanent; or • stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. -if it is not required that the medium be visible as long as there is a possibility of retrieval, then there is fixation -it is fixation that defines the time from when copyright subsists. Before fixation, there can be no infringement. WORKS PROTECTED BY COPYRIGHT A. Original Work - Literary and artistic works are original intellectual creations in the literary and artistic domain protected from the moment of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose, and shall include in particular: a) Books, pamphlets, articles and other writings

b) Periodicals and newspapers c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form d) Letters e) Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows f) Musical compositions, with or without words g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art. i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science j) Drawings or plastic works of a scientific or technical character k) Photographic works including works produced by a process analogous to photography; lantern slides l) Audiovisual works and cinematographic or any process for making audio-visual recordings m) Pictorial illustrations and advertisements n) Computer programs o) Other literary, scholarly, scientific and artistic works (Sec. 172) B. Derivative Works – the following derivative works shall also be protected: a) Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary works b) Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. (Sec. 173) WORKS NOT PROTECTED -The following works are not protected: 1) Any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if expressed, explained, illustrated, or embodied in a work; 2) News of the day and other facts having the character of mere items of press information; 3) Any official text of a legislative, administrative or legal nature, as well as any official translation thereof. (Sec. 175) 4) Any work of the Government of the Philippines. (Sec. 176) -however, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency or office, may, among other things, impose as a condition the payment of royalties 5) Pleadings; 6) Decisions of courts and tribunals. -This pertains to the “original decisions” not to the SCRA published in volumes since these are protected under derivative works. RIGHTS OF AN AUTHOR (Author – a natural person who has created the work.) A. Economic Rights (Sec. 177) 1) Right to reproduce; 2) Right to create derivative works; 3) Right to first public distribution or first sale; 4) Right to rent out the original or a cop of an audiovisual or cinematographic work; 5) Right to public performance; 6) Right to other communication of the work to the public. B. Moral Rights (Sec. 193) 1) Right of attribution or paternity right; 2) Right of alteration or non-publication;

3) Right to preservation of integrity 4) Right not to be identified with work of others or with distorted work. Term of moral right -lifetime of the author and 50 years after his death Waiver of moral right 1) by a written instrument (Sec. 195) 2) by contribution to a collective work unless expressly reserved (Sec. 196) PRINCIPLE OF AUTOMATIC PROTECTION Under the Berne Convention, the enjoyment and exercise of copyright, including moral rights, shall not be the subject of any formality. OWNERSHIP OF COPYRIGHT 1. Single creator – copyright belongs to the author of the work, his heirs or assigns. 2. Joint creation – copyright belongs to the co-authors jointly as co-owners. But if the work consists of identifiable parts, the author of each part owns the part that he has created. 3. Employee’s creation – copyright belongs to the employee if the creation is not part of his regular duties even if he uses the time, facilities and materials of the employer; otherwise it belongs to the employer 4. Commissioned work – the work belongs to the person commissioning but the copyright remains with the creator unless there is a written stipulation to the contrary. 5. Cinematographic works – the producer has copyright for purposes of exhibition; for all other purposes, the producer, the author of the scenario, the composer, the film director, the author of the work are the creators. 6. Anonymous and pseudonymous works – the publishers shall be deemed the representative of the author unless: a. the contrary appears b. the pseudonyms or adopted name leaves no doubt as to the author’s identity or c. if the author discloses his identity (Sec. 179). 7. Collective works – the contributor is deemed to have waived his right unless he expressly reserves it. (Sec. 196) Collective work – a work created by two or more persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that the contributions of natural persons will not be identified. (Sec. 171.2) 8. In case of transfers, the transferee shall own one or more or all the economic rights transferred provided: a. the assignment, if inter vivos, be in writing (Sec. 180.2) b. the assignment be filed with the National Library upon payment of the prescribed fee. (Sec. 182)

DURATION OF COPYRIGHT • Literary artistic works and derivative works of a SINGLE CREATOR - lifetime of the creator and for 50 years after his death • Joint creation – lifetime of last surviving co-creator and for 50 years after his death. • Anonymous or a work under a pseudonym not identifiable with the true name of the creator – 50 years after the date of their first publication.  Except where, before the expiration of said period, the author's identity is revealed or is no longer in doubt, the rule for single and joint creation shall apply • Photographic works – 50 years from the publication of the work, or from making the same term is given to audiovisual works produced by photography or analogous processes. • Work of Applied Art – 25 years from the date of making • Newspaper Article – lifetime of the author and 50 years after his death  A pure news report will no longer find protection under he new law, BUT a column or published comment will

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The work of performers not incorporated in RECORDING, PRODUCTS OF SOUND IMAGE RECORDINGS, and BROADCASTS, are protected for periods of 50 years, 50 years, and 20 years, respectively, counted from the end of the year of performance, recording, or broadcasts, respectively.

The term of protection shall be counted from the first day of January of the year following the death or of last publication (Sec. 214) LIMITATIONS TO THE RIGHTS ON COPYRIGHT 1) Private performance, private and personal use – applicable only “when a work has been lawfully made accessible to the public.” Personal Use -making a single reproduction, adaptation, arrangement or other transformation of another’s work exclusively for one’s own individual use in such cases as personal research, learning or amusement Private Use -making a reproduction, adaptation or other transformation of it, in a single person as in the case of “personal use” but also for a common purpose by a specific circle of persons only. 2) Fair Use of a Copyrighted Work Fair Use - A privilege in persons other than the owner of the copyright to use the copyrighted material in a reasonable manner without its consent, notwithstanding the monopoly granted to the owner by the copyright. -the doctrine of fair use is meant to balance the monopolies enjoyed by the copyright owner with interests of the public and of society. CRITERIA TO DETERMINE WHETHER USE IS FAIR OR NOT: a) Purpose and the character of the use b) Nature of the copyrighted work c) Amount and substantially of the portions used d) Effect of the use upon the potential market of the copyrighted work (Sec. 185) THE “FAIR-USES” OF PROTECTED MATERIAL ARE: a) Criticizing, commenting, and news reporting; b) Using for instructional purposes including producing multiple copies of classroom use, for scholarship, research and similar purposes (Sec. 185) 3) WORKING OF ARCHITECTURE (Sec. 186) -include the right to control the erection of any building which reproduces the whole or a substantial part of the work either in its original or in any form recognizably derived from the original; Provided, that the copyright in any such work shall not include the right to control the reconstruction, or rehabilitation in the same style as the original of a building to which that copyright relates 4) REPRODUCTION OF PUBLISHED WORK -exclusively for research and private study. 5) REPROGRAPHIC REPRODUCTION BY LIBRARIES -any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction. 6) REPRODUCTION OF COMPUTER PROGRAMS -allowed on the ff. conditions: a) only one copy is made; b) lawful owner made the copy;

c) purpose of which the reproduction is made is legal like: • use to which the program is made and for which it was purchased demand the reproduction of a copy; or • the reproduction of a copy is necessary to guarantee against loss or destruction (Sec. 189.1) 7) IMPORTATION FOR PERSONAL PURPOSES -The importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances: a) Copies of the work are not available in the Philippines and: i. not more than one copy at one time is imported for strict individual use; ii. importation is by authority and for the use of Philippine Government; or iii. Religious, charitable, or educational society imported not more than 3 copies per title provided they are not for sale. b) Copies form part of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, that such copies do not exceed three (3). (Sec. 190) REMEDIES IN CASE OF INFRINGEMENT: 1) Injunction to prevent infringement 2) Damages assessed on the basis of the proof alleged by the plaintiff of sales made by the defendant of the infringing work minus whatever costs the defendant may be able to prove and appreciated by the court. 3) Delivery under oath of all implements employed in the production of the infringing products themselves and the infringing items, for impounding or destruction as the court may order. 4) Payment of moral and exemplary damages in the discretion of court. 5) Criminal Action DIFFERENCE BETWEEN COPYRIGHT, PATENT AND TRADEMARK 1) Subject Matter of the Right: Copyright – literary, scientific or artistic work; Patent – new, useful, and industrially applicable inventions; Trademark – goods manufactured or produced 2) Where Right Registered: Copyright – National Library Patent and Trademark – IPO 3) Duration of Right: Patent – 20 years from filing or priority date Trademark – 10 years Copyright – Generally up to 50 years after the death of the author.

PART II FUNCTIONS OF THE INTELLECTUAL PROPERTY OFFICE (IPO) (SEC. 5) 1. .Examine applications for grant of letters patent for inventions and register utility models and industrial designs; 2. Examine applications for the registration of marks, geographic indications, integrated circuits; 3. Register technology transfer arrangements and settle disputes involving technology transfer payments; 4. Promote the use of patent information as a tool for technology development; 5. Publish regularly in its own publication the patents, marks, utility models and industrial designs, issued and approved, and the technology transfer arrangements registered; 6. Administratively adjudicate contested proceedings affecting intellectual property rights; and 7. Coordinate with other government agencies and the private sector to strengthen the protection of intellectual property rights in the country; 8. Custody of all records, books, drawings, specifications, documents, and other papers and things relating to the intellectual property rights applications filed with the Office. LAW ON COPYRIGHT COPYRIGHT ∗ It is that system of legal protection an author enjoys in the form of expression of ideas. (World Intellectual Property Organization - WIPO) ∗ the exclusive right (or rights) of an author to the work of his authorship (1987 Constitution). DEFINITIONS "Author" - is the natural person who has created the work. "Collective Work" - is a work which has been created by two (2) or more natural persons at the initiative and under the direction of another with the understanding that it will be disclosed by the latter under his own name and that contributing natural persons will not be identified. "Joint Work" - is a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole. i.e. medical textbook that is jointly authorized by two or three experts. "Work of applied art" - is an artistic creation with utilitarian functions or incorporated in a useful article, whether made by hand or produced on an industrial scale. "Performers" - are actors, singers, musicians, dancers, and other persons who act, sing, declaim, play in, interpret, or otherwise perform literary and artistic work. CONSTITUTIONAL BASIS ∗ The State shall protect and secure the exclusive rights of SCIENTISTS, INVENTORS, ARTISTS AND OTHER GIFTED CITIZENS to their intellectual property and creation,

particularly when beneficial to the people, for such period as may be provided by law. (Art. XIV, Sec. 13, 1987 Constitution) CIVIL CODE PROVISIONS ∗ By Intellectual creation, the following persons acquire ownership: 1. The author with regard to his literary, dramatic, historical, legal, philosophical, scientific or other work; 2. The composer, as to his musical composition; 3. The painter, sculptor, or other artist, with respect to the product of his art; 4. The scientist or technologist or any other person with regard to his discovery or invention. (Art. 721, NCC) ∗ 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 without the consent of the writer or his heirs. (Art. 723, NCC) SIGNIFICANT PROVISIONS OF THE AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS) IN REGARD TO COPYRIGHTS: a) Compliance with the provisions of the Paris convention (1967) is made compulsory to members. b) Obligations under the Paris, Berne and Rome conventions remain, c) The treatment any member-state accords its own nationals relative to intellectual property is to be accorded the nationals of all other member-states. Furthermore, any advantage, favor or privilege accorded the nationals of any other country shall be accorded the nationals of other member states. EXCLUDED from this most favored nation provision are the rights of performers, producers of phonograms and broadcasting organizations (RECIPROCITY RULE). d) Members are to comply with the Berne Convention of 1971 and its appendix, EXCEPT the rights and obligations under Article 6bis (has to do with an author's "moral rights") MEANING: whether or not the protection and guarantees conferred by Article 6bis (moral rights) apply or not is left with the municipal legislation of each member-state. SUBSISTENCE OF THE RIGHTS Conferment of rights ∗ The rights conferred by the IPC insofar as COPYRIGHT is concerned subsists from the moment of creation (Sec. 172.1). ∗ Under Philippine Law, NO FORMALITY IS REQUIRED that the author be vested with the rights of copyright. CREATION OF A WORK: ∗ A copyrightable work is created when the two requirements are met: 1. ORIGINALITY- does not mean novelty or ingenuity, neither uniqueness nor creativity, it simply means that the work "owes its origin to the author". ∗ The work is an independent creation of the author. 2. EXPRESSION-there must be "Fixation"; to be "fixed" a work must be embodied in a medium sufficiently: a) PERMANENT; or b) STABLE; to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration. Strictly speaking there is no work for copyright purpose, unless there is something tangible.

-It is fixation that defines the time from when copyright subsists. Before the time of fixation there can be no infringement. -Crucial event or act that allows the author to invoke the law: - It must be when a work of authorship is at least expressed in some determinate form, i.e. fixation. NOTE : CONTRARY VIEW - The new Intellectual Property Code is silent on the requirement of fixation. Absent this requirement of fixation, then copyright would attach to bear ideas which is excluded by universal principles of copyright. DURATION OF COPYRIGHT FOR VARIOUS WORKS: (CHAP. XIV, SEC. 213) A. LITERARY ARTISTIC WORKS AND DERIVATIVE WORKS OF A SINGLE CREATOR-the rights subsist during the lifetime of the creator and for fifty (50) years after his death. (For purposes of reckoning the start of the fifty (50)-year period, the first day of January of the year following the event which gives rise to them is the starting point - Sec. 214) b. In case of JOINT CREATION-the economic rights shall be protected during the life of the last surviving author and for fifty years after his death (the fifty-year period is counted from the death of the last surviving co-creator). c. When an ANONYMOUS OR A PSEUDONYMOUS WORK- is published, the copyright lasts till the end of fifty years following the date of their first publication. (commencing from January 1 following the date of publication - Sec. 214) d. A work of APPLIED ART enjoys protection for twenty-five (25) years from the date of making. E. PHOTOGRAPHIC WORKS- are protected for fifty (50) years from the publication of the work, or from making the same term is given to audiovisual works produced by photography or analogous processes. F. A NEWSPAPER ARTICLE- will therefore enjoy a term of protection equal to that enjoyed by other literary works: the lifetime of the author and fifty years thereafter. Important, however, relative to newspapers and periodicals is the denial of copyright protection to "news of the day and other miscellaneous facts having the character of mere items of press information." (Sec. 175) A pure news report will no longer find protection under the new law, BUT a column or published comment will. When newspapers and periodicals include works enjoying independent copyrights, the works so included continue enjoying the rights for a duration proper to them. THE SUBJECT OF COPYRIGHT A. LITERARY AND ARTISTIC WORKS 1. Books, pamphlets, articles and other writings; 2. Periodicals and newspapers; 3. Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form; 4. Letters; 5. Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows; 6. Musical compositions, with or without words; 7. Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art; 8. Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art; 9. Illustrations, maps, plans, sketches, charts and three (3) dimensional works relative to geography, topography, architecture or science; 10. Drawings or plastic works of a scientific or technical character; 11. Photographic works including works produced by a process analogous to photography; lantern slides;

12. Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audiovisual recordings; 13. Pictorial illustrations and advertisements; 14. Computer programs; and 15. Other literary, scholarly, scientific and artistic works. (Sec. 172) NOTE: The author of speeches, lectures, sermons, addresses, and dissertations shall have the exclusive right of making a collection of his works. (Sec. 176.2)

B. DERIVATIVE WORKS The following derivative works shall also be protected by copyright. 1. Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and 2. Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents (Sec. 173). ∗ An important innovation of the new law is the distinct copyright that the publisher of a work enjoys. The code provides - "In addition to the right to publish granted by the author, his heirs, or assigns, the publisher shall have a copyright consisting merely of the right of reproduction of the typographical arrangement of the published edition of the work." (Sec. 174)

WORKS NOT PROTECTED: 1. No protection shall extend, under this law, to any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; (Sec. 175) 2. News of the day and other miscellaneous facts having the character of mere items of press information; (Sec. 175) or 3. Any official text of a legislative, administrative or legal nature, as well as any official translation thereof. (Sec. 175) 4. Any work of the Government of the Philippines; ∗ However, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency or office may, among other 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 dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character. (Sec. 175) 5. Pleadings; 6. Although not explicitly mentioned, DECISIONS OF COURTS AND TRIBUNALS are likewise non-copyrightable. They may therefore be freely used or quoted. NOTE: This pertains to the "original decisions" not the SCRA PUBLISHED VOLUMES WITH ANNOTATIONS since these are protected under derivative works as "collections of literary, scholarly, or artistic works and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents." (Sec. 173.1 b) THE RIGHTS OF COPYRIGHT A. Copyright or Economic Rights

Copyright or Economic rights shall consist of the exclusive right to (a) carry out, (b) authorize or (c) prevent the following acts: 1. Reproduction of the work or substantial portion of the work; 2. Dramatization, translation, adaptation, abridgment, arrangement or other transformation of the work; 3. First public distribution of the original and each copy of the work; 4. Rental of the original or a copy of an audiovisual or cinematographic work; 5. Public display of the original or a copy of the work; 6. Public performance of the work; and 7. Other communication to the public of the work. (Sec. 177) B. Moral Rights The author of a work shall, independent of economic rights or the grant of an assignment or license with respect to such right, have the right: 1. Require that the authorship of the works be attributed to him, in a prominent way on the copies, and with the public use of the work; 2. Make any alterations of his work prior to, or to withhold it from publication; 3. Object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and 4. Restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work (Sec. 193). LIMITATIONS ON COPYRIGHT: The following acts shall NOT constitute infringement of copyright: 1. Recitation or performance of a work -made accessible to the public -privately done - free of charge -strictly for a charitable or religious institution; 2. Making of quotations from a published work - compatible with fair use - to the extent justified for the purpose - including quotations from newspaper articles and periodicals - source and name of the author, appearing on work, must be mentioned; 3. Reproduction or communication to the public by mass media - of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works, delivered in public - use is for information purposes - not expressly reserved - source is already indicated; 4. Reproduction and communication to the public of literary, scientific or artistic works - as part of reports of current events -by means of photography, cinematography or broadcasting - to the extent necessary for the purpose; 5. Inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film - if made by way of illustration for teaching purposes - compatible with fair use - source and name of the author, appearing on work, must be mentioned; 6. Recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions - such recording must be deleted within a reasonable period

- such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films EXCEPT for brief excerpts of the work; 7. Making of ephemeral recordings -by a broadcasting organization - by means of its own facilities - for use in its own broadcast; 8. Use made of a work by or under the direction or control of the Government - Government - National Library - Educational, Scientific, or professional institutions - use is in the public interest - compatible with fair use; 9. Public performance or the communication to the public of a work - in a place where no admission fee is charged by a club on institution - for charitable or educational purpose only - aim is not profit making; 10. Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process - either the work has been a) published b) sold c) given away d) transferred to another person by the author or his successors in title; 11. Any use made of a work for the purpose - of any judicial proceedings; or - for the giving of professional advice by a legal practitioner. ∗ The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interests. (Sec. 184.2) ∗ The private reproduction of a published work in a single copy, where the reproduction is made by a natural person exclusively for (1) research and (2) private study, shall be permitted, without the authorization of the owner of copyright in the work. (Sec. 187.1) HOWEVER, the permission granted under Subsection 187.1 SHALL NOT EXTEND to the reproduction of: xxx (b) An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means; (Sec. 187.2) ∗ Under Article 9, paragraph 2 of the Berne - Paris Convention, individual countries may permit the reproduction of literary and artistic works "provided that such reproduction does not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author." (also found in Sec. 187.2 e) ∗ The same caveat is contained in Article 14 of the GATT 94 intellectual property agreement: Limitations or exceptions to the exclusive rights shall be confined to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right - holder. This in-built protection of the interests of a copyright owner is now unequivocally enshrined in Sec. 187.2 e. PERSONAL USE - generally understood as making a single reproduction, adaptation, arrangement or other transformation of another's work exclusively for one's own individual use in such cases as personal research, learning or amusement. PRIVATE USE - generally understood in relation to a published work as making a reproduction, adaptation or other transformation of it, in a single person, as in the case of "personal use" but also for a common purpose by a specific circle of persons only. FAIR USE OF A COPYRIGHTED WORK

Fair Use ∗ A privilege, in persons other than the owner of the copyright, to use the copyrighted material in a reasonable manner without his consent, notwithstanding the monopoly granted to the owner by the copyright. ∗ It is meant to balance the monopolies enjoyed by the copyright owner with the interests of the public and of society. NOTE: It only applies to copyrighted work and not to non-copyrightable material.

CRITERIA TO DETERMINE WHETHER USE IS FAIR OR NOT: 1. 2. 3. 4.

Purpose and the character of the use Nature of the copyrighted work Amount and substantiality of the portions used Effect of the use upon the potential market of the copyrighted work

THE "FAIR USES" OF PROTECTED MATERIAL ARE: 1. Criticizing, commenting, and news reporting; 2. Using for instructional purposes, including producing multiple copies for classroom use, for scholarship, research and similar purposes is not an infringement of copyright. (Sec. 185) REPROGRAPHIC REPRODUCTION BY LIBRARIES: ∗ Any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction, when: 1. Fragile or rare 2. Isolated articles 3. Preservation (Sec. 188.1) 3

∗ It shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is necessary for the collection of the library and is out of stock. (Sec. 188.2)

4

∗ The rights mentioned vest in libraries, public archives and museums. There is no requirement that the library be a public library, it could be private. And is limited only to literary or artistic works. CRITERIA FOR "REPROGRAPHIC REPRODUCTION" OF LIBRARIES: 1. Photocopying only, i.e. "xerox" (not by other medium) 2. Single copy 3. Consistent with the activities of the library or archive REPRODUCTION OF COMPUTER PROGRAMS: The reproduction of a computer program is allowed on the following conditions: 1. Only one (1) copy is made; 2. Lawful owner made the copy; 3. Purpose for which the reproduction is made is legal, like: a) use to which the program is made and for which it was purchased demand the reproduction of a copy; or b) loss or destruction is avoided.

(Sec. 189.1) Importation for Personal Purposes ∗ The importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances: a. Copies of the work are not available in the Philippines and: 1.One (1) copy at one time is imported, for strict individual 2.By Authority of and for the use of the Philippine Government; or 3.Religious, Charitable or Educational Society or institution imported not more than three (3) copies per title (or kind) provided they are not for sale. (it is enough if the importation be for the sake of such society or institution) b. Copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, That such copies do not exceed three (3). (Sec. 190) THE OWNERSHIP OF COPYRIGHT 1. SINGLE CREATOR - The creator, his heirs or assigns owns copyright. 2. JOINT CREATION - The co - authors shall be the original owners of the copyright and in the absence of agreement, their rights shall be governed by the rules on co - ownership. If, however, a work of joint authorship consists of parts that can be used separately and the author of each part can be identified, the author of each part shall be the original owner of the copyright in the part that he has created. 3. COMMISSIONED WORK - Ownership of the work is in the person commissioning; ownership of copyright, remain with the creator, unless there is a written stipulation to the contrary. 4. CINEMATOGRAPHIC WORK - The producer exercises copyright for purposes of exhibition; for all other purposes, the producer, the author of the scenario, the composer, the film director, the photographic director and the author of the work are the creators. For purpses of showing the film, however, the producer is to be deemed copyright owner. 5. PSEUDONYMOUS AND ANONYMOUS WORKS - Unless the author is undisputably known, the publisher shall be presumed to be the representative of the author. (Sec. 178 and 179) ∗ As regards moral rights, the joint authors are entitled to be acknowledged as authors of the work (Sec. 193.1 may apply). As regards contributions to a collective work, the law provides that unless the contributor expressly reserves his right (which often will not be the case precisely because he is in the employ of a putative author or commonly accepted author), it is the putative author to whom the work will be attributed. (Sec. 196) ∗ When a writer, a photographer, an artist - or any other contributor - sends in his piece to a periodical or newspaper publisher, such writer or artist retains his copyright on the piece except the right to publish once - which is deemed granted to the publisher. (Sec. 180.3) COPYRIGHT OWNERSHIP OF FOREIGN AUTHORS ∗ When the author, though a foreigner, has habitual residence in the Philippines, or when the headquarters of the producer of audiovisual works is in the Philippines, copyright protection is beyond doubt. ∗ Protections afforded the code are applied to works "protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. (Sec. 221.2) ∗ Members shall accord the treatment provided for in this Agreement to the nationals of other Members. (Art. 1, par. 3, TRIPS; Paris - Berne Convention; GATT 94) DEPOSIT AND NOTICE

Registration and Deposit with the National Library and the Supreme Court Library ∗ For the purpose of completing the records of the National Library and the Supreme Court Library, within three (3) weeks, two (2) complete copies of the work shall be registered and deposited with the said libraries, by personal delivery or by registered mail. ∗ A certificate of deposit shall be issued and the prescribed fee collected for which the copyright owner shall be exempt from making additional deposit of the works with the aforementioned libraries under other laws. ∗ If, within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine. (Sec. 191) NOTICE OF COPYRIGHT ∗ Each copy of a work published or offered for sale may contain a notice bearing the name of the copyright owner, x x x. (Sec. 192) ∗ Notice of copyright is allowed, not prescribed, for the permissive "may" is used. INFRINGEMENT REMEDIES of one who complains of infringement: 1. INJUNCTION to prevent infringement (Sec. 216) 2. DAMAGES assessed on the basis of the proof alleged by the plaintiff of sales made by the defendant of the infringing work minus whatever costs the defendant may be able to prove and appreciated by the court. (b) 3. DELIVERY UNDER OATH OF ALL IMPLEMENTS employed in the production of the infringing items, as well as the infringing products themselves, for impounding. (c) 4. DELIVERY under oath of all infringing copies or devises for destruction. (d) 5. PAYMENT of moral and exemplary damages in the discretion of the court. (e) ∗ The infringer also exposes himself to criminal liability wherein the law prescribes penalties of imprisonment and fines, including subsidiary imprisonment in case of insolvency. (Sec. 218) RELATED ISSUES 1. JURISDICTION 5 Original jurisdiction lies with the Director General of the IPO over disputes relating to the terms of a license involving the author's right to public performance or other communication of his work. (Sec. 7 c) ∗ Other infringement cases are not within the jurisdiction of the Director - General. In fact throughout Section 216, the term "court" is used, leaving no doubt that jurisdiction will rest with the "court" in view of the jurisdictional amount and the criminal prosecution of imposable penalties. 2. STANDING TO SUE Persons who may sue: a) Legal owner; or b) Beneficial owner; since they are "parties in interest." 3. DEFENDANTS 6 ∗ Those who may be liable for infringement under the copyright law: a) Infringer b) Aids c) Abets d) Participates e) Contributes f) Authorizes

a) Benefits (deemed included in Sec. 217). ∗ A corner book store and magazine store that vends pirated copies of a work is in fact violating the copyright owner's right to exclusively distribute his work. Such store would therefore be infringing. The printer who, though acting under instructions from another, sets into motion the illegal reproduction of protected material would, in fact, be infringing copyright. 4. PRESCRIPTIVE PERIOD ∗ No damages may be recovered after four (4) years from the time the cause of action arose. (Sec. 226) This pertains only to recovery of damages. ∗ There is no such prescriptive period in petitions for injunctive relief as well as for the impounding and destruction of infringing material. The crime of infringement is subject to the general rules of prescription of crimes. PERFORMER'S RIGHTS 1. Authorize as well as prohibit: a. The broadcasting and other communication to the public of their performance (including telecast). (Sec. 203.1 a) b. The fixation of their unfixed performance. (b) ∗ (The above rights shall be maintained and exercised fifty (50) years after his death, by his heirs, and in default of heirs, the government Sec. 204.2) 2. Direct or indirect reproduction of their performances (Sec. 203.2) 3. First Public distribution of the original and copies of their performance (Sec. 203.3). 4. Commercial rental to the public of the original and copies of their performances (Sec. 203). 5. Making available to the public of their performances fixed in sound recordings by wire or wireless means (Sec. 204.5). MORAL RIGHTS OF PERFORMERS 1. Identified as the performer. 2. Object to any distortion or mutilation of the performance (Sec. 204).

LAW ON TRADEMARKS TRADEMARK is anything which is adopted and used to identify the source of origin of goods, and which is capable of distinguishing them from goods emanating from a competitor. GOODWILL is the reputation and public confidence that a business venture has earned through a period of creditable dealings. ∗ The reason the law protects trademarks is to protect the interests of producers in their marks, and in the goodwill earned. ∗ The essence of trademark infringement is: passing off one’s goods as those of a producer of fame or note. SERVICE MARK distinguishes the services of an enterprise from the service of other enterprises. MARK any visible sign capable of distinguishing the goods or services of an enterprise and shall include a stamped or marked container of goods.

∗ The term “visible” is not limited to whatever may be “perceptible by the senses”. COLLECTIVE MARK any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. DISTINCTION : TRADEMARKS TRADE NAME - The goods or - The person services offered (whether natural by a proprietor or juridical) who or an enterprise does the business are designated and produces the by trademarks or goods or services service marks. is designated by a trade name. ∗ A trademark has an existence proprietor or the juridical person doing business and producing the goods or distinct from the existence of the the services offered by such person or enterprise. ∗ Under the new law, there is no need to register trade names in order to secure protection for them (Sec. 165.2, a, IPL).

DISTINCTIONS : TRADEMARKS - is anything which is adopted and used to identify the source of origin of goods, and which is capable of distinguishing them from goods emanating from a competitor.

LABEL - it names what is within the container or package. purpose:inform ative

∗ In practice, a word, a name of a phrase, coupled with indicators of business organization, such as “Inc.”, “Corp.” or “Co.” will not be registered as trademarks or service marks. TRADE DRESS involves the total image of a product, including such features as size, shape, color or color combinations, texture and /or graphics. ∗ Unfair competition includes the “selling of goods and giving them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer, or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose”. ∗ All that is necessary is the likelihood of deception.

4 FUNCTIONS OF A MARK According. to the World Intellectual Property Organization: 1. Distinguishing or differentiating functions. It sets apart the products or services of an enterprise from those of another. 2. Origin or source function. It refers to origin or source in terms of enterprise. 3. Quality function. The marks guarantees the same standards and controls with which it is associated. 4. Advertising function. ACQUISITION OF RIGHT/GOODWILL THROUGH USE ∗ When a person has identified in the mind of the public the goods he manufactures or deals in his business or services from those of others, such a person has a property right in the goodwill of the said goods, of services which will be protected in the same manner as other property rights.

∗ Priority in registration in the Philippines of a trademark is not material in an action for unfair competition as distinguished from an action for infringement of trademark. The basis of an action for unfair competition is confusing and misleading similarity in general appearance, not similarity of trademark. (Converse Rubber World v. Jacinto Rubber, G.R. Nos. L-27425 and L- 30505, April 28, 1980) ∗

The use of the mark must be such as to allow the same to be associated by the public with a particular producer or manufacturer. Hence, mere intention to adopt a particular mark or name without actual use gives rise to no rights at all.

DISTINCTIONS : INFRINGEMENT OF TRADE MARK

UNFAIR

COM PETI TION 1. it is the 1. is the passing unauthorized use off of one’s of a trademark goods as those 2. fraudulent intent is of another unnecessary 2. fraudulent 3. prior registration intent is of the trademark essential is a prerequisite to 3. registration is the action not necessary. ARTICLE 189 of the Revised Penal Code provides for the following punishable acts: 1. Selling one’s goods, giving them the general appearance of the goods of another manufacturer or dealer. (Unfair competition) 2. Affixing to one’s goods or using in connection with one’s services a false designation or origin, or any false description or representation.

3. Procuring fraudulently from the patent office the registration of trade name, trademark or service mark. (Fraudulent registration) ACQUISITION THROUGH REGISTRATION ∗ The rights to a mark are acquired through registration with the Bureau of Trademarks( BT) of the Intellectual Property Office (IPO). ∗ However, it is not necessary to use the the mark in commerce in the Philippines (or elsewhere) before filing the application with the BT. The use of a mark becomes necessary only after it has been filed. ∗ new law requires an applicant or the registrant to file a declaration of actual use of the mark, with evidence to that effect, within three (30 years from the filing date of the application (Sec. 124.2, IPL). EFFECTS OF NON-USE ∗ Circumstances arising independently of the will of the trademark owner (Sec. !52, IPL), such as military coup, or political changes that impede commerce. ∗ Registration is an administrative act declaratory of a pre-existing right that does not, of itself, perfect a trademark, for what does is actual use. ∗ Non-use is a ground for removing a mark from the register (Sec. 124.2, IPL). THE FOLLOWING ARE NOT ELIGIBLE FOR LICENSING: A mark cannot be registered if it: 1. Consists of immoral, deceptive, or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; ∗ Whether a mark is immoral, scandalous or contrary to public decency is to be ascertained from the standpoint of a substantial composite of the general public. 2. Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; 3. Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; 4. Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) the same goods or services, or (ii) closely related goods or services, or (iii) if it nearly resembles such a mark as to be likely to deceive or cause confusion; REVERSE CONFUSION -takes place when a large junior user makes use of a mark or a name confusingly similar to the mark or a name of a small senior user, occasioning the impression that the products of the senior are those of the junior, or that the senior has somehow been absorbed or merged into the junior. ∗ The law institutes a “race for the registry office”, she who reaches and registers first gains the protection of law to the exclusion of others in regard to the same – or a confusingly similar – mark. 5. Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines (IPO) to be well-known internationally and in the Philippines., whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of

the public at large, including knowledge in the Philippines. Which has been obtained as a result of the promotion of the mark; ∗ Protects even unregistered marks and names. ∗ Deals with an applicant’s goods that are identical or similar to those under a previously registered or previously well-known mark. Where the same sign is used for identical goods, there will be presumption of the likelihood of confusion. (Sec. 147.1, IPL) 6. Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use; ∗ This provision deals with goods or services dissimilar from those disposed of under the same mark or name. DOCTRINE OF DILUTION -refers to copying which, while not sufficiently confusing to divert sales in the short run, will tend to divert them in the long run by weakening the instantaneous favorable associations the public makes with highly regarded products.

TESTS OF TRADEMARK INFRINGEMENT DOMINANCY HOLISTIC TEST TEST - consists in - takes stock of the seeking out the other features of main, essential a mark, taking or dominant into consideration features of a the entirety of the mark. marks. ∗ Under the Dominancy Test, if the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. TRANSLATIONS ∗ There will be infringement when a translation of a well-known mark in the Philippines. or internationally is used for similar goods or products. There will like wise be infringement when a translation of a registered mark in the Philippines. is used for dissimilar goods or products. DOCTRINE OF FOREIGN LANGUAGE EQUIVALENTS - states that "the foreign equivalent of a merely descriptive English-language word is deemed to be no more registrable than the English word itself, despite the fact that the foreign term may not be commonly known to be general public". 7. Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services;

∗ A mark then will not be granted registration that suggests a quality, a characteristics or an origin that the good or service does not possess. 8. Consists exclusively of signs that are generic for the goods or services that they seek to identify; 9. Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; ∗ It must be made clear that the fact that a term is generic does not per se render it nonregistrable. What the law excludes is the registration of a mark that is generic relative to the goods or products for which the mark is used. ∗ Where a word or a term was originally the subject of a trademark, but becomes so associated in the public mind with an article to which it is applied and thereby becomes a generic indicator, it can no longer be protected. 10. Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; ∗ That which may rightly be said of all can be appropriated by none. 11. Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; 12. Consists of color alone, unless defined by a given form; or 13. Is contrary to public order or morality (Sec. 123.1, IPL). Sec. 123.2. As regards signs or devices mentioned in paragraphs (j), (k) and (l), nothing shall prevent the registration of any such sign or device which has become distinctive, in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. The Office may accept as a prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. DOCTRINE OF SECONDARY MEANING ∗ While a generic, indicative or descriptive mark will, as a general rule, be denied registration, there is a circumstance that will allow it to be registered, this is the doctrine of secondary meaning which has been defined as, when a mark has become distinctive of the applicant's goods in commerce and, and in the mind of the public, indicates a single source to consumers, it may be registered. ∗ Requirements of the doctrine: 1. The secondary meaning must have arisen as a result of substantial commercial use in the Philippines. 2. The use result in the distinctiveness of the mark insofar as the goods or the products are concerned. 3. Prima facie evidence is proof of commercial use in the Philippines 5 years before date of claim. . RIGHTS CONFERRED 1. The right to the exclusive use of the mark for one's own goods or services.

2. The right to prevent others from the use of the same mark for identical goods or services in the course of trade. 3. The right to the exclusive use of one's already registered mark even for goods or services into which one's venture expands, if use by others for dissimilar products is likely to damage the business interests of the first venturer (Sec. 147, IPL). ∗ The rights, by Sec. 145, lasts for ten (10) years subject to indefinite renewal for periods of ten years each. ∗ The right to the use of a registered trademark may be licensed to another person, natural or juridical, enabling such a party to produce, market, distribute and advertise goods or services by the trade or service mark of the licensor. Sec. 150.1 however requires that a licensor effectively control the quality of the goods or services of the licensee.

STANDING TO SUE AND JURISDICTION ∗ The right to the use of the corporate or trade name is a property right, a right in rem, which it may assert and protect in any of the courts of the world even in jurisdiction where it does not transact business just the same as it may protect its tangible property, real or personal against trespass or conversion. ∗ Sec. 160 leaves no doubt that a foreign national or juridical person who is a national of a country that is party to a relevant convention to which the Philippines. is also a party may bring a civil or an administrative action for opposition, cancellation, infringement, unfair competition or false designation of origin and false description, regardless of its status (or lack of it) in the Philippines., and even if such an entity does not do business in the Philippines. ELEMENTS OF THE CRIME OF TRADEMARK INFRINGEMENT: 1. The deceitful act of giving one’s goods the general appearance of the goods of another manufacturer or dealer. 2. The deceptive similarity is either in the goods themselves, in the trade dress, in the words or devices, or in any other feature of appearance. 3. The offender offers to sell or sells the goods, or gives others the opportunity to do the same. 4. An actual intent to deceive the public or defraud the competitor. PATENT ∗ Is a document, issued, upon application, by a government office, which describes an invention and creates a legal situation in which the patented invention can normally only be exploited (manufactured, used, sold, imported) with the authorization of the owner of the patent ∗ is an exclusive right acquired over an invention, to sell, use and make the same whether for commerce or industry. DISTINCTIONS : PATENT COPYRIGHT – When a person, - It may be vested by independent in a work closely research arrives similar or even at the same identical to an product or that earlier, already already patented, patented work, he is restrained provided that the by the arm of the former is truly

law from exploiting such an invention by reason of the patent granted the earlier discoverer.

original, ie., it owes its existence to its creator.

∗ It will be remembered that what is not patentable may nevertheless be protected under copyright law. PATENTABILITY To be patentable, a product must be: a. a technical solution of a problem in any field of human activity b. novel c. an invention d. industrially applicable These criteria may apply to: a. products b. processes c. improvements of either products or processes PROCESS- consists of an act, operation, or steps or a series thereof, performed upon a specified subject matter to produce physical result. ∗ where the patent is for a process, the law forbids others from using the process, and also from manufacturing, dealing in , or importing any product obtained directly or indirectly from such process. PRODUCT-is broad enough a term to include every output of human ingenuity, every tangible result of craftsmanship or partnership. It is to be noted that not all products are patentable because not all process the requirements of patentability. IMPROVEMENTS- to be patentable, the improvement should be non-obvious to one skilled in the art of the original invention and is truly novel. If it is merely a consequence of technical configuration of the original invention and is thus “suggested” by the invention itself, the improvement is still within the dominion of the original invention. EXCLUDED FROM PATENT PROTECTION: 1. discoveries, scientific theories and mathematical method 2. schemes, rules and methods of performing mental acts, playing games, or doing business, and programs for computer 3. methods for treatment of the human body or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. 4. Plant varieties or animal breeds of essentially biological process for the production of plants or animals 5. Aesthetic creations 6. Anything which is contrary to public order or morality (Sec. 22). REQUIREMENTS FOR PATENT: 1. NOVELTY- that which does not form part of the prior art (Sec. 23).

“Prior art” is specified under Sec. 24, to wit: a. that which has been made available to the public anywhere in the world before the filing date or the priority date of application b. that which forms part of an application whether for patent, utility model or industrial designed, effective in the Philippines, provided that: b.1. the inventor or applicants are not the same b.2. the contents of the application are published in accordance with the requirements of patent application rules b.3. the filing date of prior art Is earlier ∗ thus prior art is synonymous with prejudicial disclosure ∗ Sec. 25 RA 8293 embodies the exception to prior art under the heading “non-prejudicial disclosure” any disclosure of the invention made within twelve (12) months before the filing date does not prejudice the application if the disclosure is made by: a. inventor himself (or by anyone who has the right to patent, Sec. 25, 2) b. patent office- when the information of the latter office comes another application filed by the inventor that should not have been disclosed by the office c. third person’s application when such persons information directly indirectly comes from the inventor himself without the inventor’s permission, or from any third persons who obtained his information from the inventor. 2. INVENTIVENESS 7 8

∗ an invention involves an inventive step if, having regard to prior act, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention (Sec. 26, RA 8293). It is suggested that the test of non-obviousness be pursued in four steps: 1. the scope and content of the prior art are determined 2. the differences between the prior art and the claims at issue are ascertained 3. the level of ordinary skill in the pertinent art is resolved 4. against this background, the obviousness or non-obviousness of the subject matter is ascertained (60 AM JUR 2d, Patents, Sec. 144).

3. CAPABLE OF INDUSTRIAL APPLICATION (TRIPS, Sec. 5 Art. 27, par. 1) Two requirements of industrial applicability shall be fulfilled: a. it can be produced b. can be used in industry (Sec. 27) 9

∗ The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. ∗ according to TRIPS, it is synonymous with “useful” ∗ (Sec. 5 Art. 29 year 1, TRIPS) “an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date”

FIRST TO FILE RULE ∗ Under Sec. 29 R.A. 8293, if two or more person have made the invention separately and independently of each other the right to the patent shall belong to the person who first filed an application for such invention.

OWNERSHIP OF PATENT RIGHTS: The right a. b. c.

to a patent belongs to: inventor, his heirs, or assigns when two (2) or more persons have jointly made an invention – to them jointly if two (2) or more persons have the invention separately and independent of each other – to the person who filed an application for such invention d. where 2 or more application are filed for the same invention – to the applicant who has the earliest filing date or the earliest priority date (Sec. 28)

TERM OF A PATENT ∗ The term of a patent shall be twenty (20) years from the filing date of application (Sec. 54 ).

INFRINGEMENT- the making, using, offering for sale , selling or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee (Sec. 76.1). TESTS OF PATENT INFRINGEMENT 1. Literal infringement- resort is had to the ”words “ of the claim. 2. Doctrine of equivalents- if two devices do the same work in substantially the same way, the same result, and produce substantially same result, they are the same eventhough they differ in name, form or shape. ∗ Sec. 78 warns that where the product is identical, it shall be presumed to have been obtained thru the use of the patented process. Thus there has evolved the doctrine of equivalents which protects a patented invention from circumvention by minor changes or deviations. THE RIGHTS OF A PATENTEE ( SEC. 71) 1. In came of a product, the patentee shall have the exclusive right to make, use, offer for sale, sell or import the product. 2. In case of a process, the patentee shall have the exclusive right to use the process, and to manufacture, deal in, use, sell or offer for sale or import any product obtained directly or indirectly from such process. ∗ The government or a third person authorized by the government may use the patent without the authority of a patent owner, provided: 1. on public interest grounds, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government so requires; i.e. importation of medicines under the Generics Act by the Department of Health. 2. The manner of exploitation by the owner of the patent or his licensee, is anticompetitive (Sec. 74.1). ∗ Under Sec. 46 R.A. 8293, After the publication of the patent application, the applicant, event while his application is still pending, is already accorded the rights of a patentee granted under the law as against any person unlawfully exercising patent rights, provided the ff. conditions concur 1. the latter has actual knowledge that the invention he was using was the subject matter of a patent 2. he has written notice of such fact

3. the action may be filed only after the grant of the patent and within four (4) years from the commission of the acts complained of. UTILITY MODELS - ARE MODELS OF IMPLEMENT OR TOOLS OF ANY INDUSTRIAL PRODUCT EVEN IF NOT POSSESSED OF THE QUALITY OF INVENTION BUT WHICH IS OF “PRACTICAL UTILITY.” ∗ Sec. 108.1 treats patents and utility models similarly what distinguishes a utility model however from a patentable invention is set forth in Sec. 109.1: An invention qualifies for registration as a utility model if it is “new” and “industrially applicable.” That is why it is said that the degree of inventiveness necessary for the grant of protection to utility model is lower in degree than that required of a patentable invention.

MANDATORY PROVISIONS The law requires that certain mandatory provisions be incorporated in the technology transfer agreement (TTA) a. Philippine Law should govern the interpretation of contracts and that in case of litigation, the venue shall be the peace where the licensee has its principal office. b. The licensee shall have continued access to improvements in techniques and processes related to the technology for the duration of the TTA. c. In cases of arbitration, the arbitration laws of the Philippines or of the UN Commission or International trade law or of the International Chamber of Commerce shall apply and the venue shall be the Philippine or any neutral country, and d. Payment of Philippine Taxes relating to the TTA shall be borne by the licensor.

PART III THE LAW ON COPYRIGHT 1. DEFINITION SECTION 177. Copyright or Economic Rights. — Subject to the provisions of Chapter VIII, copyright or economic rights shall consist of the exclusive right to carry out, authorize or prevent the following acts: 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; 177.3. The first public distribution of the original and each copy of the work by sale or other forms of transfer of ownership; 177.4. Rental of the original or a copy of an audiovisual or cinematographic work, a work embodied in a sound recording, a computer program, a compilation of data and other materials or a musical work in graphic form, irrespective of the ownership of the original or the copy which is the subject of the rental; 177.5. Public display of the original or a copy of the work; 177.6. Public performance of the work; and 177.7. Other communication to the public of the work.

2. STANDARD FOR COPYRIGHTABILITY CHING KIAN vs. CA [G.R. No. 130360. August 15, 2001] A person to be entitled to a copyright must be the original creator of the work. He must have created it by his own skill, labor and judgment without directly copying or evasively imitating the work of another. SAMBAR vs. LEVI STRAUSS [G.R. No. 132604. March 6, 2002] To be entitled to copyright, the thing being copyrighted must be original, created by the author through his own skill, labor and judgment, without directly copying or evasively imitating the work of another. 3. VESTING OF COPYRIGHT SECTION 172. Literary and Artistic Works. — 172.1. Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain protected from the moment of their creation x x x 172.2. Works are protected by the sole fact of their creation, irrespective of their mode or form of expression, as well as of their content, quality and purpose. NB: The rule enunciated in the cases of Santos vs. McCullough Printing Co. and Filipino Society of Composers vs. Tan that: "Paragraph 33 of Patent Office Administrative Order No. 3 (as amended, dated September 18, 1947) entitled 'Rules of Practice in the Philippines Patent Office relating to the Registration of Copyright Claims' promulgated pursuant to Republic Act 165, provides among other things that an intellectual creation should be copyrighted thirty (30) days after its publication, if made in Manila, or within sixty (60) days if made elsewhere, failure of which renders such creation public property," is no longer good law. 4. SCOPE SECTION 172. Literary and Artistic Works. — 172.1. Literary and artistic works, hereinafter referred to as "works", are original intellectual creations in the literary and artistic domain protected from the moment of their creation and shall include in particular: (a) Books, pamphlets, articles and other writings; (b) Periodicals and newspapers; (c) Lectures, sermons, addresses, dissertations prepared for oral delivery, whether or not reduced in writing or other material form; (d) (e)

Letters; Dramatic or dramatico-musical compositions; choreographic works or entertainment in dumb shows; (f) Musical compositions, with or without words; (g) Works of drawing, painting, architecture, sculpture, engraving, lithography or other works of art; models or designs for works of art; (h) Original ornamental designs or models for articles of manufacture, whether or not registrable as an industrial design, and other works of applied art; (i) Illustrations, maps, plans, sketches, charts and three-dimensional works relative to geography, topography, architecture or science; (j) Drawings or plastic works of a scientific or technical character; (k) Photographic works including works produced by a process analogous to photography; lantern slides; (l) Audiovisual works and cinematographic works and works produced by a process analogous to cinematography or any process for making audio-visual recordings; (m) Pictorial illustrations and advertisements;

(n) (o)

Computer programs; and Other literary, scholarly, scientific and artistic works.

SECTION 173. (a) (b)

Derivative Works. — 173.1. The following derivative works shall also be protected by copyright: Dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of literary or artistic works; and Collections of literary, scholarly or artistic works, and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents.

5. OWNERSHIP OF COPYRIGHT SECTION 178. Rules on Copyright Ownership. — Copyright ownership shall be governed by the following rules: 178.1 Subject to the provisions of this section, in the case of original literary and artistic works, copyright shall belong to the author of the work; 178.2. In the case of works of joint authorship, the co-authors shall be the original owners of the copyright and in the absence of agreement, their rights shall be governed by the rules on co-ownership. If, however, a work of joint authorship consists of parts that can be used separately and the author of each part can be identified, the author of each part shall be the original owner of the copyright in the part that he has created; 178.3. In the case of work created by an author during and in the course of his employment, the copyright shall belong to: (a) The employee, if the creation of the object of copyright is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. (b) The employer, if the work is the result of the performance of his regularly-assigned duties, unless there is an agreement, express or implied, to the contrary. 178.4. In the case of a work commissioned by a person other than an employer of the author and who pays for it and the work is made in pursuance of the commission, the person who so commissioned the work shall have ownership of the work, but the copyright thereto shall remain with the creator, unless there is a written stipulation to the contrary; 178.5. In the case of audiovisual work, the copyright shall belong to the producer, the author of the scenario, the composer of the music, the film director, and the author of the work so adapted. However, subject to contrary or other stipulations among the creators, the producer shall exercise the copyright to an extent required for the exhibition of the work in any manner, except for the right to collect performing license fees for the performance of musical compositions, with or without words, which are incorporated into the work; and 178.6. In respect of letters, the copyright shall belong to the writer subject to the provisions of Article 723 of the Civil Code. ARTICLE 723 (CIVIL CODE): 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 without the consent of the writer or his heirs. However, the court may authorize their publication or dissemination if the public good or interest of justice requires. SECTION 179. Anonymous and Pseudonymous Works. — For purposes of this Act, the publishers shall be deemed to represent the authors of articles and other writings published without the names of the authors or under pseudonyms, unless the contrary appears, or the pseudonyms or adopted name leaves no doubt as to the author's identity, or if the author of the anonymous works discloses his identity. ARTICLE 520 (CIVIL CODE): A trademark or trade name duly registered in the proper government bureau or office is owned by and pertains to the person, corporation, or firm registering the same, subject to the provisions of special laws.

6. WORKS NOT PROTECTED SECTION 175. Unprotected Subject Matter. — Notwithstanding the provisions of Sections 172 and 173, no protection shall extend, under this law, to any idea, procedure, system, method or operation, concept, principle, discovery or mere data as such, even if they are expressed, explained, illustrated or embodied in a work; news of the day and other miscellaneous facts having the character of mere items of press information; or any official text of a legislative, administrative or legal nature, as well as any official translation thereof. JOAQUIN and BJ PRODUCTIONS, INC. vs. DRILON [G.R. No. 108946. January 28, 1999] Copyright, in the strict sense of the term, is purely a statutory right. It is a new or independent right granted by the statute, and not simply a pre-existing right regulated by the statute. Being a statutory grant, the rights are only such as the statute confers, and may be obtained and enjoyed only with respect to the subjects and by the persons, and on terms and conditions specified in the statute. P.D. No. 49, §2 [now §172 of the INTELLECTUAL PROPERTY CODE OF THE PHILIPPINES (R.A. No. 8293)], in enumerating what are subject to copyright, refers to finished works and not to concepts. The copyright does not extend to an idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work. The format of a show is not copyrightable The format or mechanics of a television show is not included in the list of protected works. Copyright covers only audio-visual recordings of each episode. 7. DURATION OF COPYRIGHT SECTION 213. Term of Protection. — 213.1. Subject to the provisions of Subsections 213.2 to 213.5, the copyright in works under Sections 172 and 173 shall be protected during the life of the author and for fifty (50) years after his death. This rule also applies to posthumous works. 213.2. In case of works of joint authorship, the economic rights shall be protected during the life of the last surviving author and for fifty (50) years after his death. 213.3. In case of anonymous or pseudonymous works, the copyright shall be protected for fifty (50) years from the date on which the work was first lawfully published: Provided, That where, before the expiration of the said period, the author's identity is revealed or is no longer in doubt, the provisions of Subsections 213.1. and 213.2 shall apply, as the case may be: Provided, further, That such works if not published before shall be protected for fifty (50) years counted from the making of the work. 213.4. In case of works of applied art the protection shall be for a period of twenty-five (25) years from the date of making. 213.5. In case of photographic works, the protection shall be for fifty (50) years from publication of the work and, if unpublished, fifty (50) years from the making. 213.6. In case of audio-visual works including those produced by process analogous to photography or any process for making audio-visual recordings, the term shall be fifty (50) years from date of publication and, if unpublished, from the date of making. SECTION 215. Term of Protection for Performers, Producers and Broadcasting Organizations. — 215.1. The rights granted to performers and producers of sound recordings under this law shall expire: (a) For performances not incorporated in recordings, fifty (50) years from the end of the year in which the performance took place; and (b)

For sound or image and sound recordings and for performances incorporated therein, fifty (50) years from the end of the year in which the recording took place.

215.2. In case of broadcasts, the term shall be twenty (20) years from the date the broadcast took place. The extended term shall be applied only to old works with subsisting protection under the prior law. 8. LIMITATIONS SECTION 176. Works of the Government. — 176.1. No copyright shall subsist in any work of the Government of the Philippines. However, prior approval of the government agency or office wherein the work is created shall be necessary for exploitation of such work for profit. Such agency or office may, among other 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 dissertations, pronounced, read or rendered in courts of justice, before administrative agencies, in deliberative assemblies and in meetings of public character. 176.2. The author of speeches, lectures, sermons, addresses, and dissertations mentioned in the preceding paragraphs shall have the exclusive right of making a collection of his works. 176.3. Notwithstanding the foregoing provisions, the Government is not precluded from receiving and holding copyrights transferred to it by assignment, bequest or otherwise; nor shall publication or republication by the Government in a public document of any work in which copyright is subsisting be taken to cause any abridgment or annulment of the copyright or to authorize any use or appropriation of such work without the consent of the copyright owner. SECTION 184. Limitations on Copyright. — 184.1. Notwithstanding the provisions of Chapter V, the following acts shall not constitute infringement of copyright: (a) The recitation or performance of a work, once it has been lawfully made accessible to the public, if done privately and free of charge or if made strictly for a charitable or religious institution or society; (b) The making of quotations from a published work if they are compatible with fair use and only to the extent justified for the purpose, including quotations from newspaper articles and periodicals in the form of press summaries: Provided, That the source and the name of the author, if appearing on the work, are mentioned; (c) The reproduction or communication to the public by mass media of articles on current political, social, economic, scientific or religious topic, lectures, addresses and other works of the same nature, which are delivered in public if such use is for information purposes and has not been expressly reserved: Provided, That the source is clearly indicated; (d) The reproduction and communication to the public of literary, scientific or artistic works as part of reports of current events by means of photography, cinematography or broadcasting to the extent necessary for the purpose; (e) The inclusion of a work in a publication, broadcast, or other communication to the public, sound recording or film, if such inclusion is made by way of illustration for teaching purposes and is compatible with fair use: Provided, That the source and of the name of the author, if appearing in the work, are mentioned; (f) The recording made in schools, universities, or educational institutions of a work included in a broadcast for the use of such schools, universities or educational institutions: Provided, That such recording must be deleted within a reasonable period after they were first broadcast: Provided, further, That such recording may not be made from audiovisual works which are part of the general cinema repertoire of feature films except for brief excerpts of the work; (g) (h) (i)

The making of ephemeral recordings by a broadcasting organization by means of its own facilities and for use in its own broadcast; The use made of a work by or under the direction or control of the Government, by the National Library or by educational, scientific or professional institutions where such use is in the public interest and is compatible with fair use; The public performance or the communication to the public of a work, in a place where no admission fee is charged in respect of such public performance or

communication, by a club or institution for charitable or educational purpose only, whose aim is not profit making, subject to such other limitations as may be provided in the Regulations; (j) Public display of the original or a copy of the work not made by means of a film, slide, television image or otherwise on screen or by means of any other device or process: Provided, That either the work has been published, or, that the original or the copy displayed has been sold, given away or otherwise transferred to another person by the author or his successor in title; and (k) Any use made of a work for the purpose of any judicial proceedings or for the giving of professional advice by a legal practitioner. 184.2. The provisions of this section shall be interpreted in such a way as to allow the work to be used in a manner which does not conflict with the normal exploitation of the work and does not unreasonably prejudice the right holder's legitimate interests. SECTION 187. Reproduction of Published Work. — 187.1. Notwithstanding the provision of Section 177, and subject to the provisions of Subsection 187.2, the private reproduction of a published work in a single copy, where the reproduction is made by a natural person exclusively for research and private study, shall be permitted, without the authorization of the owner of copyright in the work. 187.2. The permission granted under Subsection 187.1 shall not extend to the reproduction of: (a) A work of architecture in the form of building or other construction; (b) An entire book, or a substantial part thereof, or of a musical work in graphic form by reprographic means; (c) A compilation of data and other materials; (d) A computer program except as provided in Section 189; and (e) Any work in cases where reproduction would unreasonably conflict with a normal exploitation of the work or would otherwise unreasonably prejudice the legitimate interests of the author. (n) SECTION 188. Reprographic Reproduction by Libraries. — 188.1. Notwithstanding the provisions of Subsection 177.6, any library or archive whose activities are not for profit may, without the authorization of the author of copyright owner, make a single copy of the work by reprographic reproduction: (a) Where the work by reason of its fragile character or rarity cannot be lent to user in its original form; (b) Where the works are isolated articles contained in composite works or brief portions of other published works and the reproduction is necessary to supply them, when this is considered expedient, to persons requesting their loan for purposes of research or study instead of lending the volumes or booklets which contain them; and (c) Where the making of such a copy is in order to preserve and, if necessary in the event that it is lost, destroyed or rendered unusable, replace a copy, or to replace, in the permanent collection of another similar library or archive, a copy which has been lost, destroyed or rendered unusable and copies are not available with the publisher. 188.2. Notwithstanding the above provisions, it shall not be permissible to produce a volume of a work published in several volumes or to produce missing tomes or pages of magazines or similar works, unless the volume, tome or part is out of stock: Provided, That every library which, by law, is entitled to receive copies of a printed work, shall be entitled, when special reasons so require, to reproduce a copy of a published work which is considered necessary for the collection of the library but which is out of stock. SECTION 189. Reproduction of Computer Program. — 189.1. Notwithstanding the provisions of Section 177, the reproduction in one (1) back-up copy or adaptation of a computer program shall be permitted, without the authorization of the author of, or other owner of copyright in, a computer program, by the lawful owner of that computer program: Provided, That the copy or adaptation is necessary for: (a) The use of the computer program in conjunction with a computer for the purpose, and to the extent, for which the computer program has been obtained; and

(b)

Archival purposes, and, for the replacement of the lawfully owned copy of the computer program in the event that the lawfully obtained copy of the computer program is lost, destroyed or rendered unusable. 189.2. No copy or adaptation mentioned in this Section shall be used for any purpose other than the ones determined in this Section, and any such copy or adaptation shall be destroyed in the event that continued possession of the copy of the computer program ceases to be lawful. 189.3. This provision shall be without prejudice to the application of Section 185 whenever appropriate. SECTION 190. Importation for Personal Purposes. — 190.1. Notwithstanding the provision of Subsection 177.6, but subject to the limitation under the Subsection 185.2, the importation of a copy of a work by an individual for his personal purposes shall be permitted without the authorization of the author of, or other owner of copyright in, the work under the following circumstances: (a) When copies of the work are not available in the Philippines and: (i) Not more than one (1) copy at one time is imported for strictly individual use only; or (ii) The importation is by authority of and for the use of the Philippine Government; or (iii) The importation, consisting of not more than three (3) such copies or likenesses in any one invoice, is not for sale but for the use only of any religious, charitable, or educational society or institution duly incorporated or registered, or is for the encouragement of the fine arts, or for any state school, college, university, or free public library in the Philippines. (b) When such copies form parts of libraries and personal baggage belonging to persons or families arriving from foreign countries and are not intended for sale: Provided, That such copies do not exceed three (3). 9. FAIR USE SECTION 185. Fair Use of a Copyrighted Work. — 185.1. The fair use of a copyrighted work for criticism, comment, news reporting, teaching including multiple copies for classroom use, scholarship, research, and similar purposes is not an infringement of copyright. Decompilation, which is understood here to be the reproduction of the code and translation of the forms of the computer program to achieve the inter-operability of an independently created computer program with other programs may also constitute fair use. In determining whether the use made of a work in any particular case is fair use, the factors to be considered shall include: (a) The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes; (b) (c)

The nature of the copyrighted work; The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (d) The effect of the use upon the potential market for or value of the copyrighted work. 185.2. The fact that a work is unpublished shall not by itself bar a finding of fair use if such finding is made upon consideration of all the above factors. HABANA et al. vs. ROBLES and GOODWILL TRADING CO., INC. [G.R. No. 131522. July 19, 1999] dissenting opinion, DAVIDE Fair use has been defined as a privilege to use the copyrighted material in a reasonable manner without the consent of the copyright owner or as copying the theme or ideas rather than their expression. No question of fair or unfair use arises however, if no copying is proved to begin with. This is in consonance with the principle that there can be no infringement if there

was no copying. It is only where some form of copying has been shown that it becomes necessary to determine whether it has been carried to an "unfair," that is, illegal, extent. 10. ASSIGNMENT SECTION 180. Rights of Assignee. — 180.1. The copyright may be assigned in whole or in part. Within the scope of the assignment, the assignee is entitled to all the rights and remedies which the assignor had with respect to the copyright. 180.2. The copyright is not deemed assigned inter vivos in whole or in part unless there is a written indication of such intention. 180.3. The submission of a literary, photographic or artistic work to a newspaper, magazine or periodical for publication shall constitute only a license to make a single publication unless a greater right is expressly granted. If two (2) or more persons jointly own a copyright or any part thereof, neither of the owners shall be entitled to grant licenses without the prior written consent of the other owner or owners. SECTION 181. Copyright and Material Object. — The copyright is distinct from the property in the material object subject to it. Consequently, the transfer or assignment of the copyright shall not itself constitute a transfer of the material object. Nor shall a transfer or assignment of the sole copy or of one or several copies of the work imply transfer or assignment of the copyright. SECTION 182. Filing of Assignment or License. — An assignment or exclusive license may be filed in duplicate with the National Library upon payment of the prescribed fee for registration in books and records kept for the purpose. Upon recording, a copy of the instrument shall be returned to the sender with a notation of the fact of record. Notice of the record shall be published in the IPO Gazette. SECTION 183. Designation of Society. — The copyright owners or their heirs may designate a society of artists, writers or composers to enforce their economic rights and moral rights on their behalf. 11. REGISTRATION SECTION 191. Registration and Deposit with National Library and the Supreme Court Library. — After the first public dissemination of performance by authority of the copyright owner of a work falling under Subsections 172.1, 172.2 and 172.3 of this Act, there shall, for the purpose of completing the records of the National Library and the Supreme Court Library, within three (3) weeks, be registered and deposited with it, by personal delivery or by registered mail two (2) complete copies or reproductions of the work in such form as the directors of said libraries may prescribe. A certificate of deposit shall be issued for which the prescribed fee shall be collected and the copyright owner shall be exempt from making additional deposit of the works with the National Library and the Supreme Court Library under other laws. If, within three (3) weeks after receipt by the copyright owner of a written demand from the directors for such deposit, the required copies or reproductions are not delivered and the fee is not paid, the copyright owner shall be liable to pay a fine equivalent to the required fee per month of delay and to pay to the National Library and the Supreme Court Library the amount of the retail price of the best edition of the work. Only the above mentioned classes of work shall be accepted for deposit by the National Library and the Supreme Court Library. 12. INFRINGEMENT SECTION 216. Remedies for Infringement. — 216.1. Any person infringing a right protected under this law shall be liable:

(a)

To an injunction restraining such infringement. The court may also order the defendant to desist from an infringement, among others, to prevent the entry into the channels of commerce of imported goods that involve an infringement, immediately after customs clearance of such goods. (b) Pay to the copyright proprietor or his assigns or heirs such actual damages, including legal costs and other expenses, as he may have incurred due to the infringement as well as the profits the infringer may have made due to such infringement, and in proving profits the plaintiff shall be required to prove sales only and the defendant shall be required to prove every element of cost which he claims, or, in lieu of actual damages and profits, such damages which to the court shall appear to be just and shall not be regarded as penalty.

(c)

Deliver under oath, for impounding during the pendency of the action, upon such terms and conditions as the court may prescribe, sales invoices and other documents evidencing sales, all articles and their packaging alleged to infringe a copyright and implements for making them. (d) Deliver under oath for destruction without any compensation all infringing copies or devices, as well as all plates, molds, or other means for making such infringing copies as the court may order. (e) Such other terms and conditions, including the payment of moral and exemplary damages, which the court may deem proper, wise and equitable and the destruction of infringing copies of the work even in the event of acquittal in a criminal case.

216.2. In an infringement action, the court shall also have the power to order the seizure and impounding of any article which may serve as evidence in the court proceedings. SECTION 217. Criminal Penalties. — 217.1. Any person infringing any right secured by provisions of Part IV of this Act or aiding or abetting such infringement shall be guilty of a crime punishable by: (a) Imprisonment of one (1) year to three (3) years plus a fine ranging from Fifty thousand pesos (P50,000) to One hundred fifty thousand pesos (P150,000) for the first offense. (b) Imprisonment of three (3) years and one (1) day to six (6) years plus a fine ranging from One hundred fifty thousand pesos (P150,000) to Five hundred thousand pesos (P500,000) for the second offense. (c) Imprisonment of six (6) years and one (1) day to nine (9) years plus a fine ranging from five hundred thousand pesos (P500,000) to One million five hundred thousand pesos (P1,500,000) for the third and subsequent offenses. (d) In all cases, subsidiary imprisonment in cases of insolvency. 217.2. In determining the number of years of imprisonment and the amount of fine, the court shall consider the value of the infringing materials that the defendant has produced or manufactured and the damage that the copyright owner has suffered by reason of the infringement. 217.3. Any person who at the time when copyright subsists in a work has in his possession an article which he knows, or ought to know, to be an infringing copy of the work for the purpose of: (a) Selling, letting for hire, or by way of trade offering or exposing for sale, or hire, the article; (b) Distributing the article for purpose of trade, or for any other purpose to an extent that will prejudice the rights of the copyright owner in the work; or (c) Trade exhibit of the article in public, shall be guilty of an offense and shall be liable on conviction to imprisonment and fine as above mentioned. SECTION 218. Affidavit Evidence. — 218.1. In an action under this Chapter, an affidavit made before a notary public by or on behalf of the owner of the copyright in any work or other subject matter and stating that: (a) At the time specified therein, copyright subsisted in the work or other subject matter; (b) He or the person named therein is the owner of the copyright; and

(c)

(a) (b)

The copy of the work or other subject matter annexed thereto is a true copy thereof, shall be admitted in evidence in any proceedings for an offense under this Chapter and shall be prima facie proof of the matters therein stated until the contrary is proved, and the court before which such affidavit is produced shall assume that the affidavit was made by or on behalf of the owner of the copyright. 218.2. In an action under this Chapter: Copyright shall be presumed to subsist in the work or other subject matter to which the action relates if the defendant does not put in issue the question whether copyright subsists in the work or other subject matter; and Where the subsistence of the copyright is established, the plaintiff shall be presumed to be the owner of the copyright if he claims to be the owner of the copyright and the defendant does not put in issue the question of his ownership. (c) Where the defendant, without good faith, puts in issue the questions of whether copyright subsists in a work or other subject matter to which the action relates, or the ownership of copyright in such work or subject matter, thereby occasioning unnecessary costs or delay in the proceedings, the court may direct that any costs to the defendant in respect of the action shall not be allowed by him and that any costs occasioned by the defendant to other parties shall be paid by him to such other parties.

SECTION 219. Presumption of Authorship. — 219.1. The natural person whose name is indicated on a work in the usual manner as the author shall, in the absence of proof to the contrary, be presumed to be the author of the work. This provision shall be applicable even if the name is a pseudonym, where the pseudonym leaves no doubt as to the identity of the author. 219.2. The person or body corporate whose name appears on a audio-visual work in the usual manner shall, in the absence of proof to the contrary, be presumed to be the maker of said work. SECTION 220. International Registration of Works. — A statement concerning a work, recorded in an international register in accordance with an international treaty to which the Philippines is or may become a party, shall be construed as true until the contrary is proved except: 220.1. Where the statement cannot be valid under this Act or any other law concerning intellectual property. 220.2. Where the statement is contradicted by another statement recorded in the international register. 20TH CENTURY FOX FILM CORPORATION vs. CA [G.R. Nos. L-76649-51. August 19, 1988] The essence of a copyright infringement is the similarity or at least substantial similarity of the purported pirated works to the copyrighted work. Hence, the applicant must present to the court the copyrighted films to compare them with the purchased evidence of the video tapes allegedly pirated to determine whether the latter is an unauthorized reproduction of the former. This linkage of the copyrighted films to the pirated films must be established to satisfy the requirements of probable cause. Mere allegations as to the existence of the copyrighted films cannot serve as basis for the issuance of a search warrant. Reiterated in Columbia Pictures, Inc vs. Court of Appeals [G.R. Nos. 96597-99. October 6, 1994.]. COLUMBIA PICTURES, INC. vs. COURT OF APPEALS [G.R. No. 110318. August 28, 1996] The fact that petitioners are admittedly copyright owners or owners of exclusive distribution rights in the Philippines motion pictures or films does not convert such ownership into an

indicium of doing business which would require them to obtain a license before they can sue upon a cause of action in local courts. It is evidently incorrect to suggest, as the ruling in 20th Century Fox may appear to do, that in copyright infringement cases, the presentation of master tapes of the copyrighted films is always necessary to meet the requirement of probable cause and that, in the absence thereof, there can be no finding of probable cause for the issuance of a search warrant. It is true that such master tapes are object evidence, with the merit that in this class of evidence the ascertainment of the controverted fact is made through demonstrations involving the direct use of the senses of the presiding magistrate. Such auxiliary procedure, however, does not rule out the use of testimonial or documentary evidence, depositions, admissions or other classes of evidence tending to prove the factum probandum, especially where the production in court of object evidence would result in delay, inconvenience or expenses out of proportion to its evidentiary value. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know what works he was indirectly copying, or did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril. In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute a piracy. It is pointless for private respondents to insist on compliance with the registration and deposit requirements under Presidential Decree No. 49 as prerequisites for invoking the court's protective mantle in copyright infringement cases. As explained by the court below: As correctly pointed out by private complainants-oppositors, the Department of Justice has resolved this legal question as far back as December 12, 1978 in its Opinion No. 191 of the then Secretary of Justice Vicente Abad Santos which stated that Sections 26 and 50 do not apply to cinematographic works and PD No. 49 "had done away with the registration and deposit of cinematographic works" and that "even without prior registration and deposit of a work which may be entitled to protection under the Decree, the creator can file action for infringement of its rights." He cannot demand, however, payment of damages arising from infringement. The same opinion stressed that "the requirements of registration and deposit are thus retained under the Decree, not as conditions for the acquisition of copyright and other rights, but as prerequisites to a suit for damages." The statutory interpretation of the Executive Branch being correct, is entitled (to) weight and respect. Section 2 of the decree prefaces its enumeration of copyrightable works with the explicit statement that "the rights granted under this Decree shall, from the moment of creation, subsist with respect to any of the following classes of works." This means that under the present state of the law, the copyright for a work is acquired by an intellectual creator from the moment of creation even in the absence of registration and deposit. That private respondents are licensed by the Videogram Regulatory Board does not insulate from criminal and civil liability for their unlawful business practices.

PEOPLE vs. RAMOS [G.R. No. L-25265. May 9, 1978] On the applicability of the four-year prescriptive period provided in Act No. 3326. The same is not applicable. Said Act provides:

"Section 1. Violations penalized by special acts shall unless otherwise provided in such acts, prescribe in accordance with the following rules: (a) . . . . . . . . . . (b) after four years for those punished by imprisonment for more than one month, but less than two years; x x x" Act No. 3326 applies only if the special act does not provide for its own prescriptive period. It has no application here, where the Copyright Law provides for its own prescriptive period, viz: "Section 24. All actions, suits, or proceedings arising under this Act shall be originally cognizable by the Courts of First Instance of the Philippines and shall prescribe after two years from the time the cause of action arose." LAKTAW vs. PAGLINAWAN [G.R. No. 11937. April 1, 1918.] Where one in publishing a Spanish-Tagalog dictionary has but copied the equivalents, definitions and different meanings given in another's Spanish-Tagalog dictionary, although making some additions of his own and some unimportant changes in the examples to illustrate the meanings of the words, such as substituting "Tayabas" for "Bulacan" in the expression "Voy a Bulacan" (I am going to Bulacan), it is evident that he merely reproduced the dictionary of the other author in violation of the Law of January 10, 1879, on Intellectual Property. The author of a dictionary published in 1889 having an exclusive right thereto, vested under the Law of January 10, 1879, and protected by the Treaty of Paris of December 10, 1898, every violator of said right will be held responsible for the damages the said author may have sustained. MERRIAM SCHOOL AND OFFICE SUPPLIES vs. CA [G.R. No. L-48413. June 30, 1980] Implicit in the Reprinting Committee's ruling is the assumption that the Merriam and Webster firms are infringers of the right to reprint the book which was exclusively awarded to National Book Store, Inc. and are not awardees of any reprinting right. The cause of action of National Book Store, Inc. is predicated on the infringement of that right. Without prejudging Civil Case No. 109414 for injunction and damages, we hold that the Court of First Instance has jurisdiction over the case. HABANA et al. vs. ROBLES and GOODWILL TRADING CO., INC. [G.R. No. 131522. July 19, 1999] In determining the question of infringement, the amount of matter copied from the copyrighted work is an important consideration. To constitute infringement, it is not necessary that the whole or even a large portion of the work shall have been copied. If so much is taken that the value of the original is sensibly diminished, or the labors of the original author are substantially and to an injurious extent appropriated by another, that is sufficient in point of law to constitute piracy. Infringement of a copyright is a trespass on a private domain owned and occupied by the owner of the copyright, and, therefore, protected by law, and infringement of copyright, or piracy, which is a synonymous term in this connection, consists in the doing by any person, without the consent of the owner of the copyright, of anything the sole right to do which is conferred by statute on the owner of the copyright. A copy of a piracy is an infringement of the original, and it is no defense that the pirate, in such cases, did not know whether or not he was infringing any copyright; he at least knew that what he was copying was not his, and he copied at his peril. In cases of infringement, copying alone is not what is prohibited. The copying must produce an "injurious effect". To allow another to copy the book without appropriate acknowledgment is injury enough. 13. PARTY

SECTION 221. Points of Attachment for Works under Sections 172 and 173. — 221.1. The protection afforded by this Act to copyrightable works under Sections 172 and 173 shall apply to: (a) Works of authors who are nationals of, or have their habitual residence in, the Philippines; (b) Audio-visual works the producer of which has his headquarters or habitual residence in the Philippines; (c) Works of architecture erected in the Philippines or other artistic works incorporated in a building or other structure located in the Philippines; (d) Works first published in the Philippines; and (e) Works first published in another country but also published in the Philippines within thirty days, irrespective of the nationality or residence of the authors. 221.2. The provisions of this Act shall also apply to works that are to be protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. SECTION 222. Points of Attachment for Performers. — The provisions of this Act on the protection of performers shall apply to: 222.1. Performers who are nationals of the Philippines; 222.2. Performers who are not nationals of the Philippines but whose performances: (a) Take place in the Philippines; or (b) Are incorporated in sound recordings that are protected under this Act; or (c) Which has not been fixed in sound recording but are carried by broadcast qualifying for protection under this Act. SECTION 223. Points of Attachment for Sound Recordings. — The provisions of this Act on the protection of sound recordings shall apply to: 223.1. Sound recordings the producers of which are nationals of the Philippines; and 223.2. Sound recordings that were first published in the Philippines. SECTION 224. Points of Attachment for Broadcasts. — 224.1. The provisions of this Act on the protection of broadcasts shall apply to: (a) Broadcasts of broadcasting organizations the headquarters of which are situated in the Philippines; and (b) Broadcasts transmitted from transmitters situated in the Philippines. 224.2. The provisions of this Act shall also apply to performers who, and to producers of sound recordings and broadcasting organizations which, are to be protected by virtue of and in accordance with any international convention or other international agreement to which the Philippines is a party. SECTION 231. Reverse Reciprocity of Foreign Laws. — Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. 14. INSTITUTION OF ACTIONS SECTION 225. Jurisdiction. — Without prejudice to the provisions of Subsection 7.1(c), actions under this Act shall be cognizable by the courts with appropriate jurisdiction under existing law. (Sec. 57, P.D. No. 49a) SECTION 226. Damages. — No damages may be recovered under this Act after four (4) years from the time the cause of action arose. (Sec. 58, P.D. No. 49)

15. MORAL RIGHTS SECTION 193. Scope of Moral Rights. — The author of a work shall, independently of the economic rights in Section 177 or the grant of an assignment or license with respect to such right, have the right: 193.1. To require that the authorship of the works be attributed to him, in particular, the right that his name, as far as practicable, be indicated in a prominent way on the copies, and in connection with the public use of his work; 193.2. To make any alterations of his work prior to, or to withhold it from publication; 193.3. To object to any distortion, mutilation or other modification of, or other derogatory action in relation to, his work which would be prejudicial to his honor or reputation; and 193.4. To restrain the use of his name with respect to any work not of his own creation or in a distorted version of his work. SECTION 194. Breach of Contract. — An author cannot be compelled to perform his contract to create a work or for the publication of his work already in existence. However, he may be held liable for damages for breach of such contract. SECTION 195. Waiver of Moral Rights. — An author may waive his rights mentioned in Section 193 by a written instrument, but no such waiver shall be valid where its effects is to permit another: 195.1. To use the name of the author, or the title of his work, or otherwise to make use of his reputation with respect to any version or adaptation of his work which, because of alterations therein, would substantially tend to injure the literary or artistic reputation of another author; or 195.2. To use the name of the author with respect to a work he did not create. SECTION 196. Contribution to Collective Work. — When an author contributes to a collective work, his right to have his contribution attributed to him is deemed waived unless he expressly reserves it. SECTION 197. Editing, Arranging and Adaptation of Work. — In the absence of a contrary stipulation at the time an author licenses or permits another to use his work, the necessary editing, arranging or adaptation of such work, for publication, broadcast, use in a motion picture, dramatization, or mechanical or electrical reproduction in accordance with the reasonable and customary standards or requirements of the medium in which the work is to be used, shall not be deemed to contravene 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 rights. SECTION 198. Term of Moral Rights. — 198.1. The rights of an author under this chapter shall last during the lifetime of the author and for fifty (50) years after his death and shall not be assignable or subject to license. The person or persons to be charged with the posthumous enforcement of these rights shall be named in writing to be filed with the National Library. In default of such person or persons, such enforcement shall devolve upon either the author's heirs, and in default of the heirs, the Director of the National Library. 198.2. For purposes of this Section, "Person" shall mean any individual, partnership, corporation, association, or society. The Director of the National Library may prescribe reasonable fees to be charged for his services in the application of provisions of this Section. SECTION 199. Enforcement Remedies. — Violation of any of the rights conferred by this Chapter shall entitle those charged with their enforcement to the same rights and remedies available to a copyright owner. In addition, damages which may be availed of under the Civil Code may also be recovered. Any damage recovered after the creator's death shall be held in trust for and remitted to his heirs, and in default of the heirs, shall belong to the government.

16. SUBSEQUENT TRANSFERS (DROIT DE SUIT) SECTION 200. Sale or Lease of Work. — In every sale or lease of an original work of painting or sculpture or of the original manuscript of a writer or composer, subsequent to the first disposition thereof by 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 right shall exist during the lifetime of the author and for fifty (50) years after his death. SECTION 201. Works Not Covered. — The provisions of this Chapter shall not apply to prints, etchings, engravings, works of applied art, or works of similar kind wherein the author primarily derives gain from the proceeds of reproductions. 17. NEIGHBORING RIGHTS SECTION 203. Scope of Performers' Rights. — Subject to the provisions of Section 212, performers shall enjoy the following exclusive rights: 203.1. As regards their performances, the right of authorizing: (a) The broadcasting and other communication to the public of their performance; and (b) The fixation of their unfixed performance. 203.2. The right of authorizing the direct or indirect reproduction of their performances fixed in sound recordings, in any manner or form; 203.3. Subject to the provisions of Section 206, the right of authorizing the first public distribution of the original and copies of their performance fixed in the sound recording through sale or rental or other forms of transfer of ownership; 203.4. The right of authorizing the commercial rental to the public of the original and copies of their performances fixed in sound recordings, even after distribution of them by, or pursuant to the authorization by the performer; and 203.5. The right of authorizing the making available to the public of their performances fixed in sound recordings, by wire or wireless means, in such a way that members of the public may access them from a place and time individually chosen by them. SECTION 204. Moral Rights of Performers. — 204.1. Independently of a performer's economic rights, the performer, shall, as regards his live aural performances or performances fixed in sound recordings, have the right to claim to be identified as the performer of his performances, except where the omission is dictated by the manner of the use of the performance, and to object to any distortion, mutilation or other modification of his performances that would be prejudicial to his reputation. 204.2. The rights granted to a performer in accordance with Subsection 203.1 shall be maintained and exercised fifty (50) years after his death, by his heirs, and in default of heirs, the government, where protection is claimed. SECTION 205. Limitation on Right. — 205.1. Subject to the provisions of Section 206, once the performer has authorized the broadcasting or fixation of his performance, the provisions of Sections 203 shall have no further application. 205.2. The provisions of Section 184 and Section 185 shall apply mutatis mutandis to performers. SECTION 206. Additional Remuneration for Subsequent Communications or Broadcasts. — Unless otherwise provided in the contract, in every communication to the public or broadcast of a performance subsequent to the first communication or broadcast thereof by the broadcasting organization, the performer shall be entitled to an additional remuneration equivalent to at least five percent (5%) of the original compensation he or she received for the first communication or broadcast.

SECTION 207. Contract Terms. — Nothing in this Chapter shall be construed to deprive performers of the right to agree by contracts on terms and conditions more favorable for them in respect of any use of their performance. SECTION 208. Scope of Right. — Subject to the provisions of Section 212, producers of sound recordings shall enjoy the following exclusive rights: 208.1. The right to authorize the direct or indirect reproduction of their sound recordings, in any manner or form; the placing of these reproductions in the market and the right of rental or lending; 208.2. The right to authorize the first public distribution of the original and copies of their sound recordings through sale or rental or other forms of transferring ownership; and 208.3. The right to authorize the commercial rental to the public of the original and copies of their sound recordings, even after distribution by them by or pursuant to authorization by the producer. SECTION 209. Communication to the Public. — If a sound recording published for commercial purposes, or a reproduction of such sound recording, is used directly for broadcasting or for other communication to the public, or is publicly performed with the intention of making and enhancing profit, a single equitable remuneration for the performer or performers, and the producer of the sound recording shall be paid by the user to both the performers and the producer, who, in the absence of any agreement shall share equally. SECTION 210. Limitation of Right. — Sections 184 and 185 shall apply mutatis mutandis to the producer of sound recordings. SECTION 211. Scope of Right. — Subject to the provisions of Section 212, broadcasting organizations shall enjoy the exclusive right to carry out, authorize or prevent any of the following acts: 211.1. The rebroadcasting of their broadcasts; 211.2. The recording in any manner, including the making of films or the use of video tape, of their broadcasts for the purpose of communication to the public of television broadcasts of the same; and 211.3. The use of such records for fresh transmissions or for fresh recording. SECTION 212. Limitations on Rights. — Sections 203, 208 and 209 shall not apply where the acts referred to in those Sections are related to: 212.1. The use by a natural person exclusively for his own personal purposes; 212.2. Using short excerpts for reporting current events; 212.3. Use solely for the purpose of teaching or for scientific research; and 212.4. Fair use of the broadcast subject to the conditions under Section 185.

THE LAW ON PATENT 1. PURPOSE MANZANO vs. COURT OF APPEALS [G.R. No. 113388. September 5, 1997] The primary purpose of the patent system is not the reward of the individual but the advancement of the arts and sciences. The function of a patent is to add to the sum of useful knowledge and one of the purposes of the patent system is to encourage dissemination of information concerning discoveries and inventions.

2. WHAT ARE PATENTABLE? a.

Inventions

SECTION 21. Patentable Inventions. — Any technical solution of a problem in any field of human activity which is new, involves an inventive step and is industrially applicable shall be Patentable. It may be, or may relate to, a product, or process, or an improvement of any of the foregoing. b. Inventiveness

SECTION 26. Inventive Step. — An invention involves an inventive step if, having regard to prior art, it is not obvious to a person skilled in the art at the time of the filing date or priority date of the application claiming the invention. VARGAS vs. CHUA, et al. [G.R. No. 36650. January 27, 1933] We have carefully examined all the plows presented as exhibits as well as the designs of those covered by the patents, and we are convinced that no substantial difference exists between the plow, Exhibit F, and the plow, Exhibit 3-Chua which was originally patented by the appellee, Vargas. The only difference noted by us is the suppression of the bolt and the three holes on the metal strap attached to the handle bar. These holes and bolt with its nut were suppressed in Exhibit F in which the beam is movable as in the original plow. The members of this court, with the plows in view, arrived at the conclusion that not only is there no fundamental difference between the two plows but no improvement whatever has been made on the latest model, for the same working and movement of the beam existed in the original model with the advantage, perhaps, that its graduation could be carried through with more certainty by the use of the bolt which as has already been stated, was adjustable and movable. As to the fact, upon which much emphasis was laid, that deeper furrows can be made with the new model, we have seen that the same result can be had with the old implement. The appellee is not entitled to the protection he seeks for the simple reason that his plow, Exhibit F, does not constitute an invention in the legal sense, and because, according to the evidence, the same type of plows had been manufactured in this country and had been in use

in many parts of the Philippine Archipelago, especially in the Province of Iloilo, long before he obtained his last patent. FRANK and GOHN vs. G. KOSUYAMA [G.R. No. 38010. December 21, 1933] We agree with the trial court that, strictly speaking, the hemp stripping machine of the plaintiffs does not constitute an invention on the ground that it lacks the elements of novelty, originality and precedence. In fact, before the plaintiffs herein obtained their patent, they themselves had already publicly used the same kind of machine for some months, at least, and, various other machines, having in general, the same characteristics and important parts as that of the said plaintiffs, were known in the Province of Davao. AGUAS vs. DE LEON [G.R. No. L-32160. January 30, 1982] Where the records disclose that private respondent's process is an improvement of the old process of tile-making and that such improvement is indeed inventive and goes beyond the exercise of mechanical skill by which private respondent has introduced a new kind of tile for a new purpose. MANZANO vs. COURT OF APPEALS [G.R. No. 113388. September 5, 1997] A utility model shall not be considered "new" if before the application for a patent it has been publicly known or publicly used in this country or has been described in a printed publication or publications circulated within the country, or if it is substantially similar to any other utility model so known, used or described within the country. c. Novelty

SECTION 23. prior art.

Novelty. — An invention shall not be considered new if it forms part of a

SECTION 24. Prior Art. — Prior art shall consist of: 24.1. Everything which has been made available to the public anywhere in the world, before the filing date or the priority date of the application claiming the invention; and 24.2. The whole contents of an application for a patent, utility model, or industrial design registration, published in accordance with this Act, filed or effective in the Philippines, with a filing or priority date that is earlier than the filing or priority date of the application: Provided, That the application which has validly claimed the filing date of an earlier application under Section 31 of this Act, shall be prior art with effect as of the filing date of such earlier application: Provided further, That the applicant or the inventor identified in both applications are not one and the same. SECTION 25. Non-Prejudicial Disclosure. — 25.1. The disclosure of information contained in the application during the twelve (12) months preceding the filing date or the priority date of the application shall not prejudice the applicant on the ground of lack of novelty if such disclosure was made by: (a) The inventor; (b) A patent office and the information was contained (a) in another application filed by the inventor and should not have been disclosed by the office, or (b) in an application filed without the knowledge or consent of the inventor by a third party which obtained the information directly or indirectly from the inventor; or (c) A third party which obtained the information directly or indirectly from the inventor. 25.2. For the purposes of Subsection 25.1, "inventor" also means any person who, at the filing date of application, had the right to the patent.

MAGUAN vs. COURT OF APPEALS [G.R. No. L-45101. November 28, 1986] It has been repeatedly held that an invention must possess the essential elements of novelty, originality and precedence and for the patentee to be entitled to protection, the invention must be new to the world. Accordingly, a single instance of public use of the invention by a patentee for more than two years (now for more than one year only under Sec. 9 of the Patent Law) before the date of his application for his patent, will be fatal to the validity of the patent when issued. (Frank, et al. v. Kosuyama; Vargas v. F.M. Yaptico & Co. and Vargas v. Chua, et al., supra). VARGAS vs. F. M. YAPTICO & Co. (LTD.) [G.R. No. 14101. September 24, 1919] The trial court reached the conclusion that "the patented plow of the plaintiff, Exhibit D, is not different from the native plow, Exhibit 2, except in the material, in the form, in the weight and the grade of the result, the said differences giving it neither a new function nor a new result distinct from the function and the result obtained from the native plow; consequently, its production does not presuppose the exercise of the inventive faculty but merely of mechanical skill, which does not give a right to a patent of an invention under the provisions of the Patent Law." In thus finding, the court may have been right, since the Vargas plow does not appear to be such a "combination" as contains a novel assemblage of parts exhibiting invention. FRANK and GOHN vs. G. KOSUYAMA [G.R. No. 38010. December 21, 1933] Supra. d. Usefulness

SECTION 27. Industrial Applicability. — An invention that can be produced and used in any industry shall be industrially applicable. e. Utility Model

SECTION 108. Applicability of Provisions Relating to Patents. — 108.1. Subject to Section 109, the provisions governing patents shall apply, mutatis mutandis, to the registration of utility models. 108.2. Where the right to a patent conflicts with the right to a utility model registration in the case referred to in Section 29, the said provision shall apply as if the word "patent" were replaced by the words "patent or utility model registration". SECTION 109. Special Provisions Relating to Utility Models. — 109.1. (a) An invention qualifies for registration as a utility model if it is new and industrially applicable. (b) Section 21, "Patentable Inventions", shall apply except the reference to inventive step as a condition of protection. 109.2. Sections 43 to 49 shall not apply in the case of applications for registration of a utility model. 109.3. A utility model registration shall expire, without any possibility of renewal, at the end of the seventh year after the date of the filing of the application. 109.4. In proceedings under Sections 61 to 64, the utility model registration shall be canceled on the following grounds: (a) That the claimed invention does not qualify for registration as a utility model and does not meet the requirements of registrability, in particular having regard to Subsection 109.1 and Sections 22, 23, 24 and 27; (b) That the description and the claims do not comply with the prescribed requirements; (c) That any drawing which is necessary for the understanding of the invention has not been furnished;

(d)

That the owner of the utility model registration is not the inventor or his successor in title.

SECTION 110. Conversion of Patent Applications or Applications for Utility Model Registration. — 110.1. At any time before the grant or refusal of a patent, an applicant for a patent may, upon payment of the prescribed fee, convert his application into an application for registration of a utility model, which shall be accorded the filing date of the initial application. An application may be converted only once. 110.2. At any time before the grant or refusal of a utility model registration, an applicant for a utility model registration may, upon payment of the prescribed fee, convert his application into a patent application, which shall be accorded the filing date of the initial application. (Sec. 58, R.A. No. 165a) SECTION 111. Prohibition against Filing of Parallel Applications. — An applicant may not file two (2) applications for the same subject, one for utility model registration and the other for the grant of a patent whether simultaneously or consecutively. f.

Industrial Designs

SECTION 112. Definition of Industrial Design. — An industrial design is any composition of lines or colors or any three-dimensional form, whether or not associated-with lines or colors: Provided, That such composition or form gives a special appearance to and can serve as pattern for an industrial product or handicraft. SECTION 113. Substantive Conditions for Protection. — 113.1. Only industrial designs that are new or original shall benefit from protection under this Act. 113.2. Industrial designs dictated essentially by technical or functional considerations to obtain a technical result or those that are contrary to public order, health or morals shall not be protected. SECTION 114. Contents of the Application. — 114.1. Every application for registration of an industrial design shall contain: (a) A request for registration of the industrial design; (b) Information identifying the applicant; (c) An indication of the kind of article of manufacture or handicraft to which the design shall be applied; (d) A representation of the article of manufacture or handicraft by way of drawings, photographs or other adequate graphic representation of the design as applied to the article of manufacture or handicraft which clearly and fully discloses those features for which design protection is claimed; and (e)

The name and address of the creator, or where the applicant is not the creator, a statement indicating the origin of the right to the industrial design registration. 114.2. The application may be accompanied by a specimen of the article embodying the industrial design and shall be subject to the payment of the prescribed fee. SECTION 115. Several Industrial Designs in One Application. — Two (2) or more industrial designs may be the subject of the same application: Provided, That they relate to the same sub-class of the International Classification or to the same set or composition of articles. SECTION 116. Examination. — 116.1. The Office shall accord as the filing date the date of receipt of the application containing indications allowing the identity of the applicant to be established and a representation of the article embodying the industrial design or a pictorial representation thereof. 116.2. If the application does not meet these requirements the filing date should be that date when all the elements specified in Section 105 are filed or the mistakes corrected. Otherwise if the requirements are not complied within the prescribed period, the application shall be considered withdrawn.

116.3. After the application has been accorded a filing date and the required fees paid on time, the applicant shall comply with the requirements of Section 114 within the prescribed period, otherwise the application shall be considered withdrawn. 116.4. The Office shall examine whether the industrial design complies with requirements of Section 112 and Subsections 113.2 and 113.3. SECTION 117. Registration. — 117.1. Where the Office finds that the conditions referred to in Section 113 are fulfilled, it shall order that registration be effected in the industrial design register and cause the issuance of an industrial design certificate of registration, otherwise, it shall refuse the application. 117.2. The form and contents of an industrial design certificate shall be established by the Regulations: Provided, That the name and address of the creator shall be mentioned in every case. 117.3. Registration shall be published in the form and within the period fixed by the Regulations. 117.4. The Office shall record in the register any change in the identity of the proprietor of the industrial design or his representative, if proof thereof is furnished to it. A fee shall be paid, with the request to record the change in the identity of the proprietor. If the fee is not paid, the request shall be deemed not to have been filed. In such case, the former proprietor and the former representative shall remain subject to the rights and obligations as provided in this Act. 117.5. Anyone may inspect the Register and the files of registered industrial designs including the files of cancellation proceedings. SECTION 118. The Term of Industrial Design Registration. — 118.1 The registration of an industrial design shall be for a period of five (5) years from the filing date of the application. 118.2. The registration of an industrial design may be renewed for not more than two (2) consecutive periods of five (5) years each, by paying the renewal fee. 118.3. The renewal fee shall be paid within twelve (12) months preceding the expiration of the period of registration. However, a grace period of six (6) months shall be granted for payment of the fees after such expiration, upon payment of a surcharge 118.4. The Regulations shall fix the amount of renewal fee, the surcharge and other requirements regarding the recording of renewals of registration. SECTION 119. Application of Other Sections and Chapters. — 119.1. The following provisions relating to patents shall apply mutatis mutandis to an industrial design registration: Section 21 — Novelty: Section 24 — Prior art: Provided, That the disclosure is contained in printed documents or in any tangible form; Section 25 — Non-prejudicial Disclosure; Section 27 — Inventions Created Pursuant to a Commission; Section 28 — Right to a Patent; Section 29 — First to File Rule; Section 31 — Right of Priority: Provided, That the application for industrial design shall be filed within six (6) months from the earliest filing date of the corresponding foreign application; Section 33 — Appointment of Agent or Representative; Section 51 — Refusal of the Application; Sections 56 to 60 — Surrender, Correction of and Changes in Patent; Chapter VII — Remedies of a Person with a Right to Patent; Chapter VIII — Rights of Patentees and Infringement of Patents; and Chapter XI — Assignment and Transmission of Rights.

119.2. If the essential elements of an industrial design which is the subject of an application have been obtained from the creation of another person without his consent, protection under this Chapter cannot be invoked against the injured party. (n) SECTION 120. Cancellation of Design Registration. — 120.1. At any time during the term of the industrial design registration, any person upon payment of the required fee, may petition the Director of Legal Affairs to cancel the industrial design on any of the following grounds: (a) If the subject matter of the industrial design is not registrable within the terms of Sections 112 and 113; (b) If the subject matter is not new; or (c) If the subject matter of the industrial design extends beyond the content of the application as originally filed. 120.2. Where the grounds for cancellation relate to a part of the industrial design, cancellation may be effected to such extent only. The restriction may be effected in the form of an alteration of the effected features of the design.

3. WHAT ARE NOT PATENTABLE? SECTION 22. Non-Patentable Inventions. — The following shall be excluded from patent protection: 22.1. Discoveries, scientific theories and mathematical methods; 22.2. Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers; 22.3. Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body. This provision shall not apply to products and composition for use in any of these methods; 22.4. Plant varieties or animal breeds or essentially biological process for the production of plants or animals. This provision shall not apply to micro-organisms and non-biological and microbiological processes. Provisions under this subsection shall not preclude Congress to consider the enactment of a law providing sui generis protection of plant varieties and animal breeds and a system of community intellectual rights protection: 22.5. Aesthetic creations; and 22.6. Anything which is contrary to public order or morality. (Sec. 8, R.A. No. 165a)

4. OWNERSHIP OF PATENT SECTION 28. Right to a Patent. — The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly. SECTION 29. First to File Rule. — If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. SECTION 30. Inventions Created Pursuant to a Commission. — 30.1. The person who commissions the work shall own the patent, unless otherwise provided in the contract. 30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to: (a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer.

(b)

The employer, if the invention is the result of the performance of his regularlyassigned duties, unless there is an agreement, express or implied, to the contrary.

SECTION 67. Patent Application by Persons Not Having the Right to a Patent. — 67.1. If a person referred to in Section 29 other than the applicant, is declared by final court order or decision as having the right to the patent, such person may, within three (3) months after the decision has become final: (a) Prosecute the application as his own application in place of the applicant; (b) File a new patent application in respect of the same invention; (c) Request that the application be refused; or (d) Seek cancellation of the patent, if one has already been issued. 67.2. The provisions of Subsection 38.2 shall apply mutatis mutandis to a new application filed under Subsection 67. 1(b). SECTION 68. Remedies of the True and Actual Inventor. — If a person, who was deprived of the patent without his consent or through fraud is declared by final court order or decision to be the true and actual inventor, the court 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 circumstances. SECTION 69. Publication of the Court Order. — The court shall furnish the Office a copy of the order or decision referred to in Sections 67 and 68, which shall be published in the IPO Gazette within three (3) months from the date such order or decision became final and executory, and shall be recorded in the register of the Office. SECTION 70. Time to File Action in Court. — The actions indicated in Sections 67 and 68 shall be filed within one (1) year from the date of publication made in accordance with Sections 44 and 51, respectively. SECTION 236. Preservation of Existing Rights. — Nothing herein shall adversely affect the rights on the enforcement of rights in patents, utility models, industrial designs, marks and works, acquired in good faith prior to the effective date of this Act. 5. APPLICATION FOR PATENT a.

Who May Apply?

SECTION 28. Right to a Patent. — The right to a patent belongs to the inventor, his heirs, or assigns. When two (2) or more persons have jointly made an invention, the right to a patent shall belong to them jointly. SECTION 29. First to File Rule. — If two (2) or more persons have made the invention separately and independently of each other, the right to the patent shall belong to the person who filed an application for such invention, or where two or more applications are filed for the same invention, to the applicant who has the earliest filing date or, the earliest priority date. SECTION 30. Inventions Created Pursuant to a Commission. — 30.1. The person who commissions the work shall own the patent, unless otherwise provided in the contract. 30.2. In case the employee made the invention in the course of his employment contract, the patent shall belong to: (a) The employee, if the inventive activity is not a part of his regular duties even if the employee uses the time, facilities and materials of the employer. (b) The employer, if the invention is the result of the performance of his regularlyassigned duties, unless there is an agreement, express or implied, to the contrary. SECTION 68. Remedies of the True and Actual Inventor. — If a person, who was deprived of the patent without his consent or through fraud is declared by final court order or

decision to be the true and actual inventor, the court 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 circumstances. SECTION 3. International Conventions and Reciprocity. — Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. SECTION 231. Reverse Reciprocity of Foreign Laws. — Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction. SECTION 235. Applications Pending on Effective Date of Act. — 235.1. All applications for patents pending in the Bureau of Patents, Trademarks and Technology Transfer shall be proceeded with and patents thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued to be enforced, to this extent and for this purpose only, notwithstanding the foregoing general repeal thereof: Provided, That applications for utility models or industrial designs pending at the effective date of this Act, shall be proceeded with in accordance with the provisions of this Act, unless the applicants elect to prosecute said applications in accordance with the Acts under which they were filed. 235.2. All applications for registration of marks or trade names pending in the Bureau of Patents, Trademarks and Technology Transfer at the effective date of this Act may be amended, if practicable to bring them under the provisions of this Act. The prosecution of such applications so amended and the grant of registrations thereon shall be proceeded with in accordance with the provisions of this Act. If such amendments are not made, the prosecution of said applications shall be proceeded with and registrations thereon granted in accordance with the Acts under which said applications were filed, and said Acts are hereby continued in force to this extent for this purpose only, notwithstanding the foregoing general repeal thereof (n) b. Application

SECTION 32. The Application. — 32.1. The patent application shall be in Filipino or English and shall contain the following: (a) A request for the grant of a patent; (b) A description of the invention; (c) Drawings necessary for the understanding of the invention; (d) One or more claims; and (e) An abstract. 32.2. No patent may be granted unless the application identifies the inventor. If the applicant is not the inventor, the Office may require him to submit said authority. SECTION 33. Appointment of Agent or Representative. — An applicant who is not a resident of the Philippines must appoint and maintain a resident agent or representative in the Philippines upon whom notice or process for judicial or administrative procedure relating to the application for patent or the patent may be served. SECTION 34. The Request. — The request shall contain a petition for the grant of the patent, the name and other data of the applicant, the inventor and the agent and the title of the invention.

SECTION 35. Disclosure and Description of the Invention. — 35.1. Disclosure. — The application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art. Where the application concerns a microbiological process or the product thereof and involves the use of a micro-organism which cannot be sufficiently disclosed in the application in such a way as to enable the invention to be carried out by a person skilled in the art, and such material is not available to the public, the application shall be supplemented by a deposit of such material with an international depository institution. 35.2. Description. — The Regulations shall prescribe the contents of the description and the order of presentation. SECTION 36. The Claims. — 36.1. The application shall contain one (1) or more claims which shall define the matter for which protection is sought. Each claim shall be clear and concise, and shall be supported by the description. 36.2. The Regulations shall prescribe the manner of the presentation of claims. SECTION 37. The Abstract. — The abstract shall consist of a concise summary of the disclosure of the invention as contained in the description, claims and drawings in preferably not more than one hundred fifty (150) words. It must be drafted in a way which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use or uses of the invention. The abstract shall merely serve for technical information. SECTION 38. Unity of Invention. — 38.1. The application shall relate to one invention only or to a group of inventions forming a single general inventive concept. 38.2. If several independent inventions which do not form a single general inventive concept are claimed in one application, the Director may require that the application be restricted to a single invention. A later application filed for an invention divided out shall be considered as having been filed on the same day as the first application: Provided, That the later application is filed within four (4) months after the requirement to divide becomes final or within such additional time, not exceeding four (4) months, as may be granted: Provided further, That each divisional application shall not go beyond the disclosure in the initial application. 38.3. The fact that a patent has been granted on an application that did not comply with the requirement of unity of invention shall not be a ground to cancel the patent. SECTION 39. Information Concerning Corresponding Foreign Application for Patents. — The applicant shall, at the request of the Director, furnish him with the date and number of any application for a patent filed by him abroad, hereafter referred to as the "foreign application," relating to the same or essentially the same invention as that claimed in the application filed with the Office and other documents relating to the foreign application. SECTION 8. The Bureau of Patents. — The Bureau of Patents shall have the following functions: 8.1. Search and examination of patent applications and the grant of patents; 8.2. Registration of utility models, industrial designs, and integrated circuits; and 8.3. Conduct studies and researches in the field of patents in order to assist the Director General in formulating policies on the administration and examination of patents. c. Priority Date

SECTION 31. Right of Priority. — An application for patent filed by any person who has previously applied for the same invention in another country which by treaty, convention, or law affords similar privileges to Filipino citizens, shall be considered as filed as of the date of filing the foreign application: Provided, That: (a) the local application expressly claims priority; (b) it is filed within twelve (12) months from the date the earliest foreign application was filed; and (c)

a certified copy of the foreign application together with an English translation is filed within six (6) months from the date of filing in the Philippines. BOOTHE vs. DIRECTOR OF PATENTS [G.R. No. L-24919. January 28, 1980] It is imperative that the application be complete in order that it may be accepted. It is essential to the validity of Letters Patent that the specifications be full, definite, and specific. The purpose of requiring a definite and accurate description of the process is to apprise the public of what the patentee claims as his invention, to inform the Courts as to what they are called upon to construe, and to convey to competing manufacturers and the dealers information of exactly what they are bound to avoid. The specification which petitioners submitted on March 5, 1954 was far from complete. The defect was one of substance and not merely one of form. What petitioners claimed as their invention was not complete determinable therefrom. Petitioners' application could be deemed as complete only on July 2, 1963 when they submitted the additional pages on the Specifications and Claims. d. Filing Date

SECTION 40. Filing Date Requirements. — 40.1. The filing date of a patent application shall be the date of receipt by the Office of at least the following elements: (a) An express or implicit indication that a Philippine patent is sought; (b) Information identifying the applicant; and (c) Description of the invention and one (1) or more claims in Filipino or English. 40.2. If any of these elements is not submitted within the period set by the Regulations, the application shall be considered withdrawn. SECTION 41. According a Filing Date. — The Office shall examine whether the patent application satisfies the requirements for the grant of date of filing 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 are received. If the deficiencies are not remedied within the prescribed time limit, the application shall be considered withdrawn. e. Formality Examination

SECTION 42. Formality Examination. — 42.1. After the patent application has been accorded a filing date and the required fees have been paid on time in accordance with the Regulations, the applicant shall comply with the formal requirements specified by Section 32 and the Regulations within the prescribed period, otherwise the application shall be considered withdrawn. 42.2. The Regulations shall determine the procedure for the re-examination and revival of an application as well as the appeal to the Director of Patents from any final action by the examiner. f.

Classification and Search

SECTION 43. Classification and Search. — An application that has complied with the formal requirements shall be classified and a search conducted to determine the prior art. g. Confidentiality Before Publication

SECTION 45. Confidentiality Before Publication. — A patent application, which has not yet been published, and all related documents, shall not be made available for inspection without the consent of the applicant. h. Publication of Patent Application

SECTION 44. Publication of Patent Application. — 44.1. The patent application shall be published in the IPO 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) months from the filing date or priority date. 44.2. After publication of a patent application, any interested party may inspect the application documents filed with the Office. 44.3. The Director General subject to the approval of the Secretary of Trade and Industry, may prohibit or restrict the publication of an application, if in his opinion, to do so would be prejudicial to the national security and interests of the Republic of the Philippines. i.

Rights Conferred by a Patent Application

SECTION 46. Rights Conferred by a Patent Application After Publication. — The applicant shall have all the rights of a patentee 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 claimed in the published patent application, as if a patent had been granted for that invention: Provided, That the said person had: 46.1. Actual knowledge that the invention that he was using was the subject matter of a published application; or 46.2. Received written notice that the invention that he was using was the subject matter of a published application being identified in the said notice by its serial number: Provided, That the action may not be filed until after the grant of a patent on the published application and within four (4) years from the commission of the acts complained of. j.

Observation by the Third Parties

SECTION 47. Observation by Third Parties. — Following the publication of the patent application, any person may present observations in writing concerning the patentability of the invention. Such observations shall be communicated to the applicant who may comment on them. The Office shall acknowledge and put such observations and comment in the file of the application to which it relates. k. Request for Substantive Examination

SECTION 48. Request for Substantive Examination. — 48.1. The application shall be deemed withdrawn unless within six (6) months from the date of publication under Section 41, a written request to determine whether a patent application meets the requirements of Sections 21 to 27 and Sections 32 to 39 and the fees have been paid on time. 48.2. Withdrawal of the request for examination shall be irrevocable and shall not authorize the refund of any fee. l.

Amendment

SECTION 49. Amendment of Application. — An applicant may amend the patent application during examination: Provided, That such amendment shall not include new matter outside the scope of the disclosure contained in the application as filed. 6. ISSUANCE AND REFUSAL OF PATENTS

SECTION 50. Grant of Patent. — 50.1. If the application meets the requirements of this Act, the Office shall grant the patent: Provided, That all the fees are paid on time. 50.2. If the required fees for grant and printing are not paid in due time, the application shall be deemed to be withdrawn. 50.3. A patent shall take effect on the date of the publication of the grant of the patent in the IPO Gazette. SECTION 51. Refusal of the Application. — 51.1. The final order of refusal of the examiner to grant the patent shall be appealable to the Director in accordance with this Act. 51.2. The Regulations shall provide for the procedure by which an appeal from the order of refusal from the Director shall be undertaken. SECTION 53. Contents of Patent. — The patent shall be issued in the name of the Republic of the Philippines under the seal of the Office and shall be signed by the Director, and registered together with the description, claims, and drawings, if any, in books and records of the Office. (Secs. 19 and 20, R.A. No. 165a) 7. PUBLICATION UPON GRANT OF PATENTS SECTION 52. Publication Upon Grant of Patent. — 52.1. The grant of the patent together with other related information shall be published in the IPO Gazette within the time prescribed by the Regulations. 52.2. Any interested party may inspect the complete description, claims, and drawings of the patent on file with the Office.

8.

TERM OF PATENT

SECTION 54. Term of Patent. — The term of a patent shall be twenty (20) years from the filing date of the application. 9.

ANNUAL FEES

SECTION 55. Annual Fees. — 55.1. To maintain the patent application or patent, an annual fee shall be paid upon the expiration of four (4) years from the date the application was published pursuant to Section 44 hereof, and on each subsequent anniversary of such date. Payment may be made within three (3) months before the due date. The obligation to pay the annual fees shall terminate should the application be withdrawn, refused, or cancelled. 55.2. If the annual fee is not paid, the patent application shall be deemed withdrawn or the patent considered as lapsed from the day following the expiration of the period within which the annual fees were due. A notice that the application is deemed withdrawn or the lapse of a patent for non-payment of any annual fee shall be published in the IPO Gazette and the lapse shall be recorded in the Register of the Office. 55.3. A grace period of six (6) months shall be granted for the payment of the annual fee, upon payment of the prescribed surcharge for delayed payment.

10. SURRENDER, CORRECTION AND AMENDMENT SECTION 56. Surrender of Patent. — 56.1. The owner of the patent, with the consent of all persons having grants or licenses or other right, title or interest in and to the patent and the invention covered thereby, which have been recorded in the Office, may surrender his patent or any claim or claims forming part thereof to the Office for cancellation.

56.2. A person may give notice to the Office of his opposition to the surrender of a patent under this section, and if he does so, the Bureau shall notify the proprietor of the patent and determine the question. 56.3. If the Office is satisfied that the patent may properly be surrendered, he may accept the offer and, as from the day when notice of his acceptance is published in the IPO Gazette, the patent shall cease to have effect, but no action for infringement shall lie and no right compensation shall accrue for any use of the patented invention before that day for the services of the government. SECTION 57. Correction of Mistakes of the Office. — The Director shall have the power to correct, without fee, any mistake in a patent incurred through the fault of the Office when clearly disclosed in the records thereof, to make the patent conform to the records. SECTION 58. Correction of Mistake in the Application. — On request of any interested person and payment of the prescribed fee, the Director is authorized to correct any mistake in a patent of a formal and clerical nature, not incurred through the fault of the Office. SECTION 59. Changes in Patents. — 59.1. The owner of a patent shall have the right to request the Bureau to make the changes in the patent in order to: (a) Limit the extent of the protection conferred by it; (b) Correct obvious mistakes or to correct clerical errors; and (c) Correct mistakes or errors, other than those referred to in letter (b), made in good faith: Provided, That where the change would result in a broadening of the extent of protection conferred by the patent, no request may be made after the expiration of two (2) years from the grant of a patent and the change shall not affect the rights of any third party which has relied on the patent, as published. 59.2. No change in the patent shall be permitted under this section, where the change would result in the disclosure contained in the patent going beyond the disclosure contained in the application filed. 59.3. If, and to the extent to which the Office changes the patent according to this section, it shall publish the same. (n) SECTION 60. Form and Publication of Amendment. — An amendment or correction of a patent shall be accomplished by a certificate of such amendment or correction, authenticated by the seal of the Office and signed by the Director, which certificate shall be attached to the patent. Notice of such amendment or correction shall be published in the IPO Gazette and copies of the patent kept or furnished by the Office shall include a copy of the certificate of amendment or correction.

11. CANCELLATION OF PATENTS a. Grounds

SECTION 61. Cancellation of Patents. — 61.1. Any interested person may, upon payment of the required fee, petition to cancel the patent or any claim thereof, or parts of the claim, on any of the following grounds: (a) That what is claimed as the invention is not new or Patentable; (b) That the patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by any person skilled in the art; or (c) That the patent is contrary to public order or morality. 61.2. Where the grounds for cancellation relate to some of the claims or parts of the claim, cancellation may be effected to such extent only. SECTION 82. Patent Found Invalid May be Cancelled. — In an action for infringement, if the court shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the

court, shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette. b. Proceedings

SECTION 62. Requirement of the Petition. — The petition for cancellation shall be in writing, verified by the petitioner or by any person in his behalf who knows the facts, specify the grounds upon which it is based, include a statement of the facts to be relied upon, and filed with the Office. Copies of printed publications or of patents of other countries, and other supporting documents mentioned in the petition shall be attached thereto, together with the translation thereof in English, if not in the English language. SECTION 63. Notice of Hearing. — Upon filing of a petition for cancellation, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patentee and all persons having grants 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 of hearing thereon on such persons and the petitioner. Notice of the filing of the petition shall be published in the IPO Gazette. SECTION 64. Committee of Three. — In cases involving highly technical issues, on motion of any party, the Director of Legal Affairs may order that the petition be heard and decided by a committee composed of the Director of Legal Affairs as chairman and two (2) members who have the experience or expertise in the field of technology to which the patent sought to be cancelled relates. The decision of the committee shall be appealable to the Director General. SECTION 65. Cancellation of the Patent. — 65.1. If the Committee finds that a case for cancellation has been proved, it shall order the patent or any specified claim or claims thereof cancelled. 65.2. If the Committee finds that, taking into consideration the amendment made by the patentee during the cancellation proceedings, the patent and the invention to which it relates meet the requirement of this Act, it may decide to maintain the patent as amended: Provided, That the fee for printing of a new patent is paid within the time limit prescribed in the Regulations. 65.3. If the fee for the printing of a new patent is not paid in due time, the patent should be revoked. 65.4. If the patent is amended under Subsection 65.2 hereof, the Bureau shall, at the same time as it publishes the mention of the cancellation decision, publish the abstract, representative claims and drawings indicating clearly what the amendments consist of. SECTION 66. Effect of Cancellation of Patent or Claim. — The rights conferred by the patent or any specified claim or claims cancelled shall terminate. Notice of the cancellation shall be published in the IPO Gazette. Unless restrained by the Director General, the decision or order to cancel by Director of Legal Affairs shall be immediately executory even pending appeal.

12. RIGHTS OF PATENTEE a. Rights

SECTION 71. (a)

Rights Conferred by Patent. — 71.1. A patent shall confer on its owner the following exclusive rights: Where the subject matter of a patent is a product, to restrain, prohibit and prevent any unauthorized person or entity from making, using, offering for sale, selling or importing that product;

(b)

Where the subject matter of a patent is a process, to restrain, prevent or prohibit any unauthorized person or entity from using the process, and from manufacturing, dealing in, using, selling or offering for sale, or importing any product obtained directly or indirectly from such process. 71.2. Patent owners shall also have the right to assign, or transfer by succession the patent, and to conclude licensing contracts for the same. PARKE, DAVIS & COMPANY vs. DOCTORS' PHARMACEUTICALS, INC. [G.R. No. L27361. May 29, 1981.] Had the lower court hypothetically assumed as true, for the purpose of the motion to dismiss, the allegations in the complaint that "Chloramphenicol" and "Chloramphenicol Palmitate" are entirely different substances and that "Venimicetin Suspension" actually contains "Chloramphenicol Palmitate" and not "Chloramphenicol" as indicated in its package and label, it necessarily would have to conclude that the complaint states causes of action for infringement of patent and for unfair competition. For defendants would then be guilty of infringement of patent by selling, causing to be sold, using and causing to be used "Chloramphenicol Palmitate", without the consent or authority of the plaintiff as the holder of Letters Patent No. 279, Claim 4 of which allegedly covers said substance. Likewise, the defendants would be guilty of unfair competition by falsely stating that defendant No. 1's medicine called "Venimicetin Suspension" contains "Chloramphenicol" when in fact it actually contains "Chloramphenicol Palmitate", and that it is covered by a compulsory license from the plaintiff. b. Limitations

SECTION 72. Limitations of Patent Rights. — The owner of a patent has no right to prevent third parties from performing, without his authorization, the acts referred to in Section 71 hereof in the following circumstances: 72.1. Using a patented product which has been put on the market in the Philippines by the owner of the product, or with his express consent, insofar as such use is performed after that product has been so put on the said market; 72.2. Where the act is done privately and on a non-commercial scale or for a non-commercial purpose: Provided, That it does not significantly prejudice the economic interests of the owner of the patent; 72.3. Where the act consists of making or using exclusively for the purpose of experiments that relate to the subject matter of the patented invention; 72.4. Where the act consists of the preparation for individual cases, in a pharmacy or by a medical professional, of a medicine in accordance with a medical prescription or acts concerning the medicine so prepared; 72.5. Where the invention is used in any ship, vessel, aircraft, or land vehicle of any other country entering the territory of the Philippines temporarily or accidentally: Provided, That such invention is used exclusively for the needs of the ship, vessel, aircraft, or land vehicle and not used for the manufacturing of anything to be sold within the Philippines. SECTION 73. Prior User. — 73.1. Notwithstanding Section 72 hereof, any prior user, who, in good faith was using the invention or has undertaken serious preparations to use the invention in his enterprise or business, before the filing date or priority date of the application on which a patent is granted, shall have the right to continue the use thereof as envisaged in such preparations within the territory where the patent produces its effect. 73.2. The right of the prior user may only be transferred or assigned together with his enterprise or business, or with that part of his enterprise or business in which the use or preparations for use have been made. SECTION 74. Use of Invention by Government. — 74.1. A Government agency or third person authorized by the Government may exploit the invention even without agreement of the patent owner where:

(a)

The public interest, in particular, national security, nutrition, health or the development of other sectors, as determined by the appropriate agency of the government, so requires; or (b) A judicial or administrative body has determined that the manner of exploitation, by the owner of the patent or his licensee is anti-competitive. 74.2. The use by the Government, or third person authorized by the Government shall be subject, mutatis mutandis, to the conditions set forth in Sections 95 to 97 and 100 to 102. c. Action for Infringement

FRANK and GOHN vs. BENITO [G.R. No. 27793. March 16, 1928] It is well established that an improver cannot appropriate the basic patent of another, and that the improver without license is an infringer and may be sued as such.

GSELL vs. YAP-JUE [G.R. No. 1816. April 17, 1906] The evidence also shows clearly that the defendant used, and had been using, the same process for the manufacture of walking sticks and umbrella handle, the exclusive right to which had been granted to, the plaintiff's assignor. The evidence also shows that the original grantee of the patent, Henry Alfred Gsell, had duly transferred to the plaintiff herein, and that the plaintiff herein thereby succeeded to all of the right granted in said letter patent. MAGUAN vs. COURT OF APPEALS [G.R. No. L-45101. November 28, 1986] The burden of proof to substantiate a charge of infringement is with the plaintiff. But where the plaintiff introduces the patent in evidence, and the same is in due form, there is created a prima facie presumption of its correctness and validity. GODINES vs. COURT OF APPEALS [G.R. No. 97343. September 13, 1993] Tests have been established to determine infringement. These are (a) literal infringement; and (b) the doctrine of equivalents. In using literal infringement as a test, ". . . resort must be had, in the first instance, to the words of the claim. If accused matter clearly falls within the claim, infringement is made out and that is the end of it." To determine whether the particular item falls within the literal meaning of the patent claims, the Court must juxtapose the claims of the patent and the accused product within the overall context of the claims and specifications, to determine whether there is exact identity of all material elements. Recognizing that the logical fallback position of one in the place of defendant is to aver that his product is different from the patented one, courts have adopted the doctrine of equivalents which recognizes that minor modifications in a patented invention are sufficient to put the item beyond the scope of literal infringement. Thus, according to this doctrine, "(a)n infringement also occurs when a device appropriates a prior invention by incorporating its innovative concept and, albeit with some modification and change, performs substantially the same function in substantially the same way to achieve substantially the same result." The reason for the doctrine of equivalents is that to permit the imitation of a patented invention which does not copy any literal detail would be to convert the protection of the patent grant into a hollow and useless thing. Such imitation would leave room for — indeed encourage — the unscrupulous copyist to make unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be enough to take the copied matter outside the claim, and hence outside the reach of the law.

DEL ROSARIO vs. COURT OF APPEALS [G.R. No. 115106. March 15, 1996] It is elementary that a patent may be infringed where the essential or substantial features of the patented invention are taken or appropriated, or the device, machine or other subject matter alleged to infringe is substantially identical with the patent invention. In order to infringe a patent, a machine or device must perform the same function, or accomplish the same result by identical or substantially identical means and the principle or mode of operation must be substantially the same. d. Civil

SECTION 75. Extent of Protection and Interpretation of Claims. — 75.1. The extent of protection conferred by the patent shall be determined by the claims, which are to be interpreted in the light of the description and drawings. 75.2. For the purpose of determining the extent of 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 considered to cover not only all the elements as expressed therein, but also equivalents. SECTION 76. Civil Action for Infringement. — 76.1. The making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee constitutes patent infringement. 76.2. Any patentee, or anyone possessing any right, title or interest in and to the patented invention, whose rights have been infringed, may bring a civil action before a court of competent jurisdiction, to recover from the infringer such damages sustained thereby, plus attorney's fees and other expenses of litigation, and to secure an injunction for the protection of his rights. 76.3. If the damages are inadequate or cannot be readily ascertained with reasonable certainty, the court may award by way of damages a sum equivalent to reasonable royalty. 76.4. The court may, according to the circumstances of the case, award damages in a sum above the amount found as actual damages sustained: Provided, That the award does not exceed three (3) times the amount of such actual damages. 76.5. The court may, in its discretion, order that the infringing goods, materials and implements predominantly used in the infringement be disposed of outside the channels of commerce or destroyed, without compensation. 76.6. Anyone who actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process knowing it to be especially adopted for infringing the patented invention and not suitable for substantial non-infringing use shall be liable as a contributory infringer and shall be jointly and severally liable with the infringer. e. Criminal Action for Repetition of Infringement

SECTION 84. Criminal Action for Repetition of Infringement. — If infringement is repeated by the infringer or by anyone in connivance with him after finality of the judgment of the court against the infringer, the offenders shall, without prejudice to the institution of a civil action for damages, be criminally liable therefor and, upon conviction, shall suffer imprisonment for the period of not less than six (6) months but not more than three (3) years and/or a fine of not less than One hundred thousand pesos (P100,000) but not more than Three hundred thousand pesos (P300,000), at the discretion of the court. The criminal action herein provided shall prescribe in three (3) years from date of the commission of the crime. f.

Administrative

SECTION 10.2. (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided further, That availment of the provisional remedies may be granted in accordance with the Rules of Court. The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings. (b) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following administrative penalties: (i) (ii)

(iii)

(iv) (v)

(vi)

(vii) (viii) (ix) (x)

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 within a reasonable time which shall be fixed in the order; The acceptance of a voluntary assurance of compliance or discontinuance as may be imposed. Such voluntary assurance may include one or more of the following: (1) An assurance to comply with the provisions of the intellectual property law violated; (2) An assurance to refrain from engaging in unlawful and unfair acts and practices subject of the formal investigation; (3) An assurance to recall, replace, repair, or refund the money value of defective goods distributed in commerce; and (4) An assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the Bureau of Legal Affairs. The Director of Legal Affairs may also require the respondent to submit periodic compliance reports and file a bond to guarantee compliance of his undertaking; The condemnation or seizure of products which are subject of the offense. The goods seized hereunder shall be disposed of in such manner as may be deemed appropriate by the Director of Legal Affairs, such as by sale, donation to distressed local governments or to charitable or relief institutions, exportation, recycling into other goods, or any combination thereof, under such guidelines as he may provide; The forfeiture of paraphernalia and all real and personal properties which have been used in the commission of the offense; The imposition of administrative fines in such amount as deemed reasonable by the Director of Legal Affairs, which shall in no case be less than Five thousand pesos (P5,000) nor more than One hundred fifty thousand pesos (P150,000). In addition, an additional fine of not more than One thousand pesos (P1,000) shall be imposed for each day of continuing violation; The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of time as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year; The withholding of any permit, license, authority, or registration which is being secured by the respondent from the Office; The assessment of damages; Censure; and Other analogous penalties or sanctions.

g. Who may File?

SECTION 77. Infringement Action by a Foreign National. — Any foreign national or juridical entity who meets the requirements of Section 3 and not engaged in business in the Philippines, to which a patent has been granted or assigned under this Act, may bring an action for infringement of patent, whether or not it is licensed to do business in the Philippines under existing law. CRESER PRECISION SYSTEMS, INC vs. COURT OF APPEALS [G.R. No. 118708. February 2, 1998]

Only the patentee or his successors-in-interest may file an action for infringement. The phrase "anyone possessing any right, title or interest in and to the patented invention" upon which petitioner maintains its present suit, refers only to the patentee's successors-in-interest, assignees or grantees since actions for infringement of patent may be brought in the name of the person or persons interested, whether as patentee, assignees, or as grantees, of the exclusive right. 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 the grant of patent. In short, a person or entity who has not been granted letters patent over an invention and has not acquired any right or title thereto either as assignee or as licensee, has no cause of action for infringement because the right to maintain an infringement suit depends on the existence of the patent. h. Presumptions

SECTION 78. Process Patents; Burden of Proof . — If the subject matter of a patent is a process for obtaining a product, any identical product shall be presumed to have been obtained through the use of the patented process if the product is new or there is substantial likelihood that the identical product was made by the process and the owner of the patent has been unable despite reasonable efforts, to determine the process actually used. In ordering the defendant to prove that the process to obtain the identical product is different from the patented process, the court shall adopt measures to protect, as far as practicable, his manufacturing and business secrets. i.

Damages

SECTION 79. Limitation of Action for Damages. — No damages can be recovered for acts of infringement committed more than four (4) years before the institution of the action for infringement. SECTION 80. Damages, Requirement of Notice. — Damages cannot be recovered for acts of infringement committed before the infringer had known, or had reasonable grounds to know of the patent. It is presumed that the infringer had known of the patent if on the patented product, or on the container or package in which the article is supplied to the public, or on the advertising material relating to the patented product or process, are placed the words "Philippine Patent" with the number of the patent. j.

Defenses

SECTION 81. Defenses in Action for Infringement. — In an action for infringement, the defendant, in addition to other defenses available to him, may show the invalidity of the patent, or any claim thereof, on any of the grounds on which a petition of cancellation can be brought under Section 61 hereof. k. Patent Found Invalid may be Cancelled

SECTION 82. Patent Found Invalid May be Cancelled. — In an action for infringement, if the court shall find the patent or any claim to be invalid, it shall cancel the same, and the Director of Legal Affairs upon receipt of the final judgment of cancellation by the court, shall record that fact in the register of the Office and shall publish a notice to that effect in the IPO Gazette. l.

Assessors

SECTION 83. Assessor in Infringement Action. — 83.1. Two (2) or more assessors may be appointed by the court. The assessors shall be possessed of the necessary scientific and technical knowledge required by the subject matter in litigation. Either party may challenge the fitness of any assessor proposed for appointment.

83.2. Each assessor shall receive a compensation in an amount to be fixed by the court and advanced by the complaining party, which shall be awarded as part of his costs should he prevail in the action. m. Licensing

i.

Voluntary

SECTION 85. Voluntary License Contract. — To encourage the transfer and dissemination of technology, prevent or control practices and conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition and trade, all technology transfer arrangements shall comply with the provisions of this Chapter. SECTION 86. Jurisdiction to Settle Disputes on Royalties. — The Director of the Documentation, Information and Technology Transfer Bureau shall exercise quasi-judicial jurisdiction in the settlement of disputes between parties to a technology transfer arrangement arising from technology transfer payments, including the fixing of appropriate amount or rate of royalty. SECTION 87. Prohibited Clauses. — Except in cases under Section 91, the following provisions shall be deemed prima facie to have an adverse effect on competition and trade: 87.1. Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor; 87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license; 87.3. Those that contain restrictions regarding the volume and structure of production; 87.4. Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement; 87.5. Those that establish a full or partial purchase option in favor of the licensor; 87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology; 87.7. Those that require payment of royalties to the owners of patents for patents which are not used; 87.8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted; 87.9. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement, except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee; 87.10. Those which require payments for patents and other industrial property rights after their expiration, termination arrangement; 87.11. Those which require that the technology recipient shall not contest the validity of any of the 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 programs in connection with new products, processes or equipment; 87.13. Those which prevent the licensee from adapting the imported technology to local conditions, or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor; 87.14. Those which exempt the licensor for liability for non-fulfilment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology; and 87.15. Other clauses with equivalent effects.

SECTION 88. Mandatory Provisions. — The following provisions shall be included in voluntary license contracts: 88.1. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office; 88.2. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement; 88.3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and 88.4. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor. (n) SECTION 89. Rights of Licensor. — In the absence of any provision to the contrary in the technology transfer arrangement, the grant of a license shall not prevent the licensor from granting further licenses to third person nor from exploiting the subject matter of the technology transfer arrangement himself. SECTION 90. Rights of Licensee. — The licensee shall be entitled to exploit the subject matter of the technology transfer arrangement during the whole term of the technology transfer arrangement. SECTION 91. Exceptional Cases. — In exceptional or meritorious cases where substantial benefits will accrue to the economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional dispersal of industries and/or substitution with or use of local raw materials, or in the case of Board of Investments, registered companies with pioneer status, exemption from any of the above requirements may be allowed by the Documentation, Information and Technology Transfer Bureau after evaluation thereof on a case by case basis. SECTION 92. Non-Registration with the Documentation, Information and Technology Transfer Bureau. — Technology transfer arrangements that conform with the provisions of Sections 86 and 87 need not be registered with the Documentation, Information and Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87 and 88, however, shall automatically render the technology transfer arrangement unenforceable, unless said technology transfer arrangement is approved and registered with the Documentation, Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases. ii.

Compulsory

SECTION 4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market. SECTION 93. Grounds for Compulsory Licensing. — The Director of Legal Affairs may grant a license to exploit a patented invention, even without the agreement of the patent owner, in favor of any person who has shown his capability to exploit the invention, under any of the following circumstances: 93.1. National emergency or other circumstances of extreme urgency;

93.2. Where the public interest, in particular, national security, nutrition, health or the development of other vital sectors of the national economy as determined by the appropriate agency of the Government, so requires; or 93.3. Where a judicial or administrative body has determined that the manner of exploitation by the owner of the patent or his licensee is anti-competitive; or 93.4. In case of public non-commercial use of the patent by the patentee, without satisfactory reason; 93.5. If the patented invention is not being worked in the Philippines on a commercial scale, although capable of being worked, without satisfactory reason: Provided, That the importation of the patented article shall constitute working or using the patent. SECTION 94. Period for Filing a Petition for a Compulsory License. — 94.1. A compulsory license may not be applied for on the ground stated in Subsection 93.5 before the expiration of a period of four (4) years from the date of filing of the application or three (3) years from the date of the patent whichever period expires last. 94.2. A compulsory license which is applied for on any of the grounds stated in Subsections 93.2, 93.3, and 93.4 and Section 97 may be applied for at any time after the grant of the patent. SECTION 95. Requirement to Obtain a License on Reasonable Commercial Terms. — 95.1. The license will only be granted after the petitioner has made efforts to obtain authorization from the patent owner on reasonable commercial terms and conditions but such efforts have not been successful within a reasonable period of time. 95.2. The requirement under Subsection 95.1 shall not apply in the following cases: (a) Where the petition for compulsory license seeks to remedy a practice determined after judicial or administrative process to be anti-competitive; (b) In situations of national emergency or other circumstances of extreme urgency; (c) In cases of public non-commercial use. 95.3. In situations of national emergency or other circumstances of extreme urgency, the right holder shall be notified as soon as reasonably practicable. 95.4. In the case of public non-commercial use, where the government or contractor, without making a patent search, knows or has demonstrable grounds to know that a valid patent is or will be used by or for the government, the right holder shall be informed promptly. SECTION 96. Compulsory Licensing of Patents Involving Semi-Conductor Technology. — In the case of compulsory licensing of patents involving semi-conductor technology, the license may only be granted in case of public non-commercial use or to remedy a practice determined after judicial or administrative process to be anti-competitive. SECTION 97. Compulsory License Based on Interdependence of Patents. — If the invention protected by a patent, hereafter referred to as the "second patent," within the country cannot be worked without infringing another patent, hereafter referred to as the "first patent," granted on a prior application or benefiting from an earlier priority, a compulsory license may be granted to the owner of the second patent to the extent necessary for the working of his invention, subject to the following conditions: 97.1. The invention claimed in the second patent involves an important technical advance of considerable economic significance in relation to the first patent; 97.2. The owner of the first patent shall be entitled to a cross-license on reasonable terms to use the invention claimed in the second patent; 97.3. The use authorized in respect of the first patent shall be non-assignable except with the assignment of the second patent; and cdasia 97.4. The terms and conditions of Sections 95, 96 and 98 to 100 of this Act. SECTION 98. Form and Contents of Petition. — The petition for compulsory licensing must be in writing, verified by the petitioner and accompanied by payment of the required filing fee. It shall contain the name and address of the petitioner as well as those of the respondents, the number and date of issue of the patent in connection with which compulsory license is sought, the name of the patentee, the title of the invention,

the statutory grounds upon which compulsory license is sought, the ultimate facts constituting the petitioner's cause of action, and the relief prayed for. SECTION 99. Notice of Hearing. — 99.1. Upon filing of a petition, the Director of Legal Affairs shall forthwith serve notice of the filing thereof upon the patent owner and all persons having grants or licenses, or any other right, title or interest in and to the patent and invention covered thereby as appears of record in the Office, and of notice of the date of hearing thereon, on such persons and petitioner. The resident agent or representative appointed in accordance with Section 33 hereof, shall be bound to accept service of notice of the filing of the petition within the meaning of this Section. 99.2. In every case, the notice shall be published by the said Office in a newspaper of general circulation, once a week for three (3) consecutive weeks and once in the IPO Gazette at applicant's expense. SECTION 100. Terms and Conditions of Compulsory License. — The basic terms and conditions including the rate of royalties of a compulsory license shall be fixed by the Director of Legal Affairs subject to the following conditions: 100.1. The scope and duration of such license shall be limited to the purpose for which it was authorized; 100.2. The license shall be non-exclusive; 100.3. The license shall be non-assignable, except with that part of the enterprise or business with which the invention is being exploited; 100.4. Use of the subject matter of the license shall be devoted predominantly for the supply of the Philippine market: Provided, That this limitation shall not apply where the grant of the license is based on the ground that the patentee's manner of exploiting the patent is determined by judicial or administrative process, to be anti-competitive. 100.5. The license may be terminated upon proper showing that circumstances which led to its grant have ceased to exist and are unlikely to recur: Provided, That adequate protection shall be afforded to the legitimate interest of the licensee; and 100.6. The patentee shall be paid adequate remuneration taking into account the economic value of the grant or authorization, except that in cases where the license was granted to remedy a practice which was determined after judicial or administrative process, to be anti-competitive, the need to correct the anti-competitive practice may be taken into account in fixing the amount of remuneration. SECTION 101. Amendment, Cancellation, Surrender of Compulsory License. — 101.1. Upon the request of the patentee or the licensee, the Director of Legal Affairs may amend the decision granting the compulsory license, upon proper showing of new facts or circumstances justifying such amendment. 101.2. Upon the request of the patentee, the said Director may cancel the compulsory license: (a) If the ground for the grant of the compulsory license no longer exists and is unlikely to recur; (b) If the licensee has neither begun to supply the domestic market nor made serious preparation therefor; (c) If the licensee has not complied with the prescribed terms of the license; 101.3. The licensee may surrender the license by a written declaration submitted to the Office. 101.4. The said Director shall cause the amendment, surrender, or cancellation in the Register, notify the patentee, and/or the licensee, and cause notice thereof to be published in the IPO Gazette. SECTION 102. Licensee's Exemption from Liability. — Any person who works a patented product, substance and/or process under a license granted under this Chapter, shall be free from any liability for infringement: Provided however, That in the case of voluntary licensing, no collusion with the licensor is proven. This is without prejudice to the right of the rightful owner of the patent to recover from the licensor whatever he may have received as royalties under the license.

PRICE, et al., vs. UNITED LABORATORIES [G.R. No. L-82542. September 29, 1988] The terms and conditions of the compulsory license may be filed by the Director of Patents after a hearing and careful consideration of the evidence of the parties and in default of an agreement between them as to the terms of the license. Of indubitable relevance to this point is the evidence that UNILAB has been engaged in the business of manufacturing drugs and pharmaceutical products for the past thirty (30) years, that it is the leading drug manufacturer in the country, that it has the necessary equipment and technological expertise for the development of solid dosage forms or for tablet, capsule, and liquid preparations, and that it maintains standards and procedures to ensure the quality of its products. Even if it were true, as alleged by the patentee (although it is denied by UNILAB), that its capability to use the patented compound was only acquired after the petition for compulsory licensing had been filed, the important thing is that such capability was proven to exist during the hearing of the petition. The patented invention in this case relates to medicine and is necessary for public health as it can be used as component in the manufacture of anti-ulcer medicine. The Director of Patents did not err in granting a compulsory license over the entire patented invention for there is no law requiring that the license be limited to a specific embodiment of the invention, or, to a particular claim. In any event, since the petitioner will be paid royalties on the sales of any products the licensee may manufacture using any or all of the patented compounds, the petitioner cannot complain of a deprivation of property rights without just compensation. SMITH KLINE & FRENCH LABORATORIES, LTD. vs. CA [G.R. No. 121867. July 24, 1997] Section A(2) of Article 5 of the Paris Conventional unequivocally and explicitly respects the right of member countries to adopt legislative measures to provide for the grant of compulsory licenses to prevent abuses which might result from the exercise of the exclusive rights conferred by the patent. An example provided of possible abuses is "failure to work;" however, as such, is merely supplied by way of an example, it is plain that the treaty does not preclude the inclusion of other forms of categories of abuses. The legislative intent in the grant of a compulsory license was not only to afford others an opportunity to provide the public with the quantity of the patented product, but also to prevent the growth of monopolies. SMITH KLINE & FRENCH LABORATORIES, LTD. vs. CA [G.R. No. 121267. October 23, 2001] Neither does the Court agree with petitioner that the grant of the compulsory license to private respondent was erroneous because the same would lead the public to think that the Cimetidine is the invention of private respondent and not of petitioner. Such fears are unfounded since, as the appellate court pointed out in the assailed decision, by the grant of the compulsory license, private respondent as licensee explicitly acknowledges that petitioner is the source of the patented product Cimetidine. Even assuming arguendo that such confusion may indeed occur, the disadvantage is far outweighed by the benefits resulting from the grant of the compulsory license, such as an increased supply of pharmaceutical products containing Cimetidine, and the consequent reduction in the prices thereof. There is likewise no basis for the allegation that the grant of a compulsory license to private respondent results in the deprivation of petitioner's property without just compensation. It must be pointed out that as owner of Letters Patent No. 12207, petitioner had already enjoyed exclusive rights to manufacture, use and sell Cimetidine for at least two years from its grant in November, 1978. Even if other entities like private respondent are subsequently allowed to

manufacture, use and sell the patented invention by virtue of a compulsory license, petitioner as owner of the patent would still receive remuneration for the use of such product in the form of royalties. n. Right to Transfer

SECTION 103. Transmission of Rights. — 103.1. Patents or applications for patents and invention to which they relate, shall be protected in the same way as the rights of other property under the Civil Code. 103.2. Inventions and any right, title or interest in and to patents and inventions covered thereby, may be assigned or transmitted by inheritance or bequest or may be the subject of a license contract. SECTION 104. Assignment of Inventions. — An assignment may be of the entire right, title or interest in and to the patent and the invention covered thereby, or of an undivided share of the entire patent and invention, in which event the parties become joint owners thereof. An assignment may be limited to a specified territory. SECTION 105. Form of Assignment. — The assignment must be in writing, acknowledged before a notary public or other officer authorized to administer oath or perform notarial acts, and certified under the hand and official seal of the notary or such other officer. SECTION 106. Recording. — 106.1. The Office shall record assignments, licenses and other instruments relating to the transmission of any right, title or interest in and to inventions, and patents or application for patents or inventions to which they relate, which are presented in due form to the Office for registration, in books and records kept for the purpose. The original documents together with a signed duplicate 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, however, That neither of the joint owners shall be entitled to grant licenses or to assign his right, title or interest or part thereof without the consent of the other owner or owners, or without proportionally dividing the proceeds with such other owner or owners. SECTION 85. Voluntary License Contract. — To encourage the transfer and dissemination of technology, prevent or control practices and conditions that may in particular cases constitute an abuse of intellectual property rights having an adverse effect on competition and trade, all technology transfer arrangements shall comply with the provisions of this Chapter. SECTION 86. Jurisdiction to Settle Disputes on Royalties. — The Director of the Documentation, Information and Technology Transfer Bureau shall exercise quasi-judicial jurisdiction in the settlement of disputes between parties to a technology transfer arrangement arising from technology transfer payments, including the fixing of appropriate amount or rate of royalty.

SECTION 87. Prohibited Clauses. — Except in cases under Section 91, the following provisions shall be deemed prima facie to have an adverse effect on competition and trade: 87.1. Those which impose upon the licensee the obligation to acquire from a specific source capital goods, intermediate products, raw materials, and other technologies, or of permanently employing personnel indicated by the licensor; 87.2. Those pursuant to which the licensor reserves the right to fix the sale or resale prices of the products manufactured on the basis of the license; 87.3. Those that contain restrictions regarding the volume and structure of production; 87.4. Those that prohibit the use of competitive technologies in a non-exclusive technology transfer agreement; 87.5. Those that establish a full or partial purchase option in favor of the licensor; 87.6. Those that obligate the licensee to transfer for free to the licensor the inventions or improvements that may be obtained through the use of the licensed technology; 87.7. Those that require payment of royalties to the owners of patents for patents which are not used; 87.8. Those that prohibit the licensee to export the licensed product unless justified for the protection of the legitimate interest of the licensor such as exports to countries where exclusive licenses to manufacture and/or distribute the licensed product(s) have already been granted; 87.9. Those which restrict the use of the technology supplied after the expiration of the technology transfer arrangement, except in cases of early termination of the technology transfer arrangement due to reason(s) attributable to the licensee; 87.10. Those which require payments for patents and other industrial property rights after their expiration, termination arrangement; 87.11. Those which require that the technology recipient shall not contest the validity of any of the 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 programs in connection with new products, processes or equipment; 87.13. Those which prevent the licensee from adapting the imported technology to local conditions, or introducing innovation to it, as long as it does not impair the quality standards prescribed by the licensor; 87.14. Those which exempt the licensor for liability for non-fulfilment of his responsibilities under the technology transfer arrangement and/or liability arising from third party suits brought about by the use of the licensed product or the licensed technology; and 87.15. Other clauses with equivalent effects. SECTION 88. Mandatory Provisions. — The following provisions shall be included in voluntary license contracts: 88.1. That the laws of the Philippines shall govern the interpretation of the same and in the event of litigation, the venue shall be the proper court in the place where the licensee has its principal office; 88.2. Continued access to improvements in techniques and processes related to the technology shall be made available during the period of the technology transfer arrangement; 88.3. In the event the technology transfer arrangement shall provide for arbitration, the Procedure of Arbitration of the Arbitration Law of the Philippines or the Arbitration Rules of the United Nations Commission on International Trade Law (UNCITRAL) or the Rules of Conciliation and Arbitration of the International Chamber of Commerce (ICC) shall apply and the venue of arbitration shall be the Philippines or any neutral country; and 88.4. The Philippine taxes on all payments relating to the technology transfer arrangement shall be borne by the licensor. SECTION 89. Rights of Licensor. — In the absence of any provision to the contrary in the technology transfer arrangement, the grant of a license shall not prevent the licensor from

granting further licenses to third person nor from exploiting the subject matter of the technology transfer arrangement himself. SECTION 90. Rights of Licensee. — The licensee shall be entitled to exploit the subject matter of the technology transfer arrangement during the whole term of the technology transfer arrangement. SECTION 91. Exceptional Cases. — In exceptional or meritorious cases where substantial benefits will accrue to the economy, such as high technology content, increase in foreign exchange earnings, employment generation, regional dispersal of industries and/or substitution with or use of local raw materials, or in the case of Board of Investments, registered companies with pioneer status, exemption from any of the above requirements may be allowed by the Documentation, Information and Technology Transfer Bureau after evaluation thereof on a case by case basis. SECTION 92. Non-Registration with the Documentation, Information and Technology Transfer Bureau. — Technology transfer arrangements that conform with the provisions of Sections 86 and 87 need not be registered with the Documentation, Information and Technology Transfer Bureau. Non-conformance with any of the provisions of Sections 87 and 88, however, shall automatically render the technology transfer arrangement unenforceable, unless said technology transfer arrangement is approved and registered with the Documentation, Information and Technology Transfer Bureau under the provisions of Section 91 on exceptional cases. ALBAÑA vs. DIRECTOR OF PATENTS [G.R. No. L-4572. May 22, 1953] Assignments of patents and inventions covered thereby may be recorded in books and records kept for the purpose in the Patent Office if presented in due form (Republic Act 165, sections 51-53). But where a person other than the inventor files a motion with the Director of Patents praying that the applicant-inventor be compelled to sign the contract executed by a coapplicant-inventor and both applicant-inventors to acknowledge it before a notary public as well as another document which refers to the minutes of a meeting of the organizers of a manufacturing corporation, and then to have both documents recorded in the Patent Office and in the office of the registrar of deeds, the Director of Patents has no power and authority to compel the applicant-inventors to do what the movant is asking them to perform. What the movant asks the Director of Patents to do for him is essentially a judicial function which would require the determination of finding by a court of competent jurisdiction as to whether there was a meeting of the minds of the contracting parties before it could compel any of them to perform what the movant prays the court to order him to do.

THE LAW ON TRADEMARKS 1. DEFINITION SECTION 121.1. "Mark" means any visible sign capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods; DISTILLERIA WASHINGTON, INC. vs. COURT OF APPEALS [G.R. No. 120961. October 17, 1996] A trademark refers to a word, name, symbol, emblem, sign or device or any combination thereof adopted and used by a merchant to identify, and distinguish from others, his goods of commerce. It is basically an intellectual creation that is susceptible to ownership. 2. FUNCTIONS ANG TIBAY vs. TEODORO [G.R. No. 48226. December 14, 1942] The function of a trademark is to point distinctively, either by its own meaning or by association, to the origin or ownership of the wares to which it is applied. ETEPHA vs. DIRECTOR OF PATENTS [G.R. No. L-20635. March 31, 1966] The objects of a trademark are to point out distinctly the origin or ownership of the article to which it is affixed, to secure to him who has been instrumental in bringing into market a superior article of merchandise the fruit of his industry and skill, and to prevent fraud and imposition. MIRPURI vs. COURT OF APPEALS [G.R. No. 114508. November 19, 1999] The function of a trademark is to point out distinctly the origin or ownership of the goods to which it is affixed; to secure to him, who has been instrumental in bringing into the market a superior article of merchandise, the fruit of his industry and skill; to assure the public that they are procuring the genuine article; to prevent fraud and imposition; and to protect the manufacturer against substitution and sale of an inferior and different article as his product.

3. ACQUISITION SECTION 122. How Marks are Acquired. — The rights in a mark shall be acquired through registration made validly in accordance with the provisions of this law. Cases decided under Rep. Act 166 §2-A, which states that: “Ownership of trademarks, tradenames and service marks; how acquired. — Anyone who lawfully produces or deals in merchandise of any kind or who engages in any lawful business, or who renders any lawful service in commerce, by actual use thereof in manufacture or trade, in business, and in the service rendered, may appropriate to his exclusive use a trademark, a tradename, or a service mark not so appropriated by another, to distinguish his merchandise, business or service from the merchandise, business or service of

others. The ownership or possession of a trademark, tradename, service mark, heretofore or hereafter appropriated, as in this section provided, shall be recognized and protected in the same manner and to the same extent as are other property rights known to the law.” UNNO COMMERCIAL ENTERPRISES vs. GENERAL MILLING CORP. [G.R. No. L-28554. February 28, 1983] Registration merely creates a prima facie presumption of the validity of the registration, of the registrant's ownership of the trademark and of the exclusive right to the use thereof. Registration does not perfect a trademark right. Evidence may be presented to overcome the presumption. Prior use by one will controvert a claim of legal appropriation by subsequent users. KABUSHI KAISHA ISETAN vs. IAC [G.R. No. 75420. November 15, 1991] A fundamental principle of Philippine Trademarks Law is that actual use in commerce in the Philippines is a pre-requisite to the acquisition of ownership over a trademark or a trade name. A prior registrant cannot claim exclusive use of the trademark unless it uses it in commerce. PHILIP MORRIS, INC., et al. vs. COURT OF APPEALS [G.R. No. 91332. July 16, 1993] Albeit petitioners are holders of certificate of registration in the Philippines of their symbols as admitted by private respondent, the fact of exclusive ownership cannot be made to rest solely on these documents since dominion over trademarks is not acquired by the mere fact of registration alone and does not perfect a trademark right. NB: As the law now stands, there is no need for prior use.

4. WHAT MARKS MAY BE REGISTERED? SECTION 123. Registrability. — 123.1. A mark cannot be registered if it: (a) Consists of immoral, deceptive or scandalous matter, or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt or disrepute; (b) Consists of the flag or coat of arms or other insignia of the Philippines or any of its political subdivisions, or of any foreign nation, or any simulation thereof; (c) Consists of a name, portrait or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the Philippines, during the life of his widow, if any, except by written consent of the widow; (d) Is identical with a registered mark belonging to a different proprietor or a mark with an earlier filing or priority date, in respect of: (i) The same goods or services, or (ii) Closely related goods or services, or (iii) If it nearly resembles such a mark as to be likely to deceive or cause confusion; (e) Is identical with, or confusingly similar to, or constitutes a translation of a mark which is considered by the competent authority of the Philippines to be well-known internationally and in the Philippines, whether or not it is registered here, as being already the mark of a person other than the applicant for registration, and used for identical or similar goods or services: Provided, That in determining whether a mark is well-known, account shall be taken of the knowledge of the relevant sector of the public, rather than of the public at large, including knowledge in the Philippines which has been obtained as a result of the promotion of the mark; (f)

Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is

registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use; (g) Is likely to mislead the public, particularly as to the nature, quality, characteristics or geographical origin of the goods or services; (h) Consists exclusively of signs that are generic for the goods or services that they seek to identify; (i) Consists exclusively of signs or of indications that have become customary or usual to designate the goods or services in everyday language or in bona fide and established trade practice; (j) Consists exclusively of signs or of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production of the goods or rendering of the services, or other characteristics of the goods or services; (k) Consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value; (l) Consists of color alone, unless defined by a given form; or (m) Is contrary to public order or morality. 123.2. As regards signs or devices mentioned in paragraphs (j), (k), and (l), nothing shall prevent the registration of any such sign or device which has become distinctive in relation to the goods for which registration is requested as a result of the use that have been made of it in commerce in the Philippines. The Office may accept as prima facie evidence that the mark has become distinctive, as used in connection with the applicant's goods or services in commerce, proof of substantially exclusive and continuous use thereof by the applicant in commerce in the Philippines for five (5) years before the date on which the claim of distinctiveness is made. 123.3. The nature of the goods to which the mark is applied will not constitute an obstacle to registration. ETEPHA vs. DIRECTOR OF PATENTS [G.R. No. L-20635. March 31, 1966] "Tussin" is merely descriptive; it is generic; it furnishes to the buyer no indication of the origin of the goods; it is open for appropriation by anyone. It is accordingly barred from registration as trademark. While "tussin" by itself cannot thus be used exclusively to identify one's goods, it may properly become the subject of a trademark "by combination with another word or phrase." GUILLERMO BAXTER vs. ZUAZUA, et al., [G.R. No. 1750. October 26, 1905] The ownership of the trademark "Agua de Kananga" did not give the plaintiffs a right to the exclusive use of the word "Kananga." The word "Kananga" represents the name of a wellknown tree in the Philippines. The said word could not be used exclusively as a trade-mark, any more than could the words "sugar," "tobacco," or "coffee." The law is clear and conclusive upon the subject. "A designation or part of a designation," says section 2 of Act No. 666, "which relates only to the name, quality, or description of the merchandise . . . can not be the subject of a trade-mark." COMPAÑIA GENERAL DE TABACOS DE FILIPINAS vs. ALHAMBRA CIGAR & CIGARETTE MANUFACTURING CO. [G.R. No. 10251. February 10, 1916] We do not believe that the word "Isabela" can be appropriated or could be appropriated at the time plaintiff claimed that it began to use that word as descriptive of its products. The Royal Decree of 1888 prohibited the use of a geographical name as a trade-name or trade-mark. ANG vs. TEODORO [G.R. No. 48226. December 14, 1942]

An inquiry into the etymology and meaning of the Tagalog words "Ang Tibay" shows that the phrase is never used adjectively to define or describe an object. It is, therefore, not a descriptive term within the meaning of the Trade-mark Law but rather a fanciful or coined phrase which may properly and legally be appropriated as a trade-mark or trade-name. Hence, it was originally capable of exclusive appropriation as a trade-mark by the respondent. Even if assuming “Ang Tibay” were not capable of exclusive appropriation as a trademark, the application of the doctrine of secondary meaning could nevertheless be fully sustained because, in any event, be respondent’s long and exclusive use of said phrase with reference to his products and his business, it has acquired a proprietary connotation. This doctrine is to the effect that a word or phrase originally incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of purchasing public, the word of phrase has come to mean that the article was his product. ARCE SONS & CO. vs. SELECTA BISCUIT COMPANY, INC. [G.R. No. L-14761. January 28, 1961] The word "SELECTA", it is true, may be an ordinary or common word in the sense that it may be used or employed by any one in promoting his business or enterprise, but once adopted or coined in connection with one's business as an emblem, sign or device to characterize its products, or as a badge of authenticity, it may acquire a secondary meaning as to be exclusively associated with its products and business. The term "SELECTA" may be placed at par with the words "Ang Tibay" which this Court has considered not merely as a descriptive term within the meaning of the Trade-mark Law but as a fanciful or coined phrase, or a trademark. KABUSHI KAISHA ISETAN vs. IAC [G.R. No. 75420. November 15, 1991] Isetann Department Store, Inc. is the name of a store and not of products sold in various parts of the country. This case must be differentiated from cases involving products bearing such familiar names as "Colgate", "Singer", "Toyota", or "Sony" where the products are marketed widely in the Philippines. There is no product with the name "Isetann" popularized with that brand name in the Philippines. EMERALD GARMENT vs. COURT OF APPEALS [G.R. No. 100098. December 29, 1995] "LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of said term. It has been held that a personal name or surname may not be monopolized as a trademark or trade name as against others of the same name or surname. For in the absence of contract, fraud, or estoppel, any man may use his name or surname in all legitimate ways. 5. REGISTRATION SECTION 3. International Conventions and Reciprocity. — Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. SECTION 124. Requirements of Application. — 124.1. The application for the registration of the mark shall be in Filipino or in English and shall contain the following: (a) A request for registration;

(b) (c) (d) (e) (f)

(h) (i)

The name and address of the applicant; The name of a State of which the applicant is a national or where he has domicile; and the name of a State in which the applicant has a real and effective industrial or commercial establishment, if any; Where the applicant is a juridical entity, the law under which it is organized and existing; The appointment of an agent or representative, if the applicant is not domiciled in the Philippines; Where the applicant claims the priority of an earlier application, an indication of: i) The name of the State with whose national office the earlier application was filed or if filed with an office other than a national office, the name of that office, ii) The date on which the earlier application was filed, and 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; Where the mark is a three-dimensional mark, a statement to that effect; One or more reproductions of the mark, as prescribed in the Regulations; (j) A transliteration or translation of the mark or of some parts of the mark, as prescribed in the Regulations;

(k) The names of the goods or services for which the registration is sought, grouped according to the classes of the Nice Classification, together with the number of the class of the said Classification to which each group of goods or services belongs; and (l) A signature by, or other self-identification of, the applicant or his representative. 124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director. 124.3. One (1) application may relate to several goods and/or services, whether they belong to one (1) class or to several classes of the Nice Classification. 124.4. If during the examination of the application, the Office finds factual basis to reasonably doubt the veracity of any indication or element in the application, it may require the applicant to submit sufficient evidence to remove the doubt. SECTION 125. Representation; Address for Service. — If the applicant is not domiciled or has no real and effective commercial establishment in the Philippines, he shall designate by a written document filed in the Office, the name and address of a Philippine resident who may be served notices or process in proceedings affecting the mark. Such notices or services may be served upon the person so designated by leaving a copy thereof at the address specified in the last designation filed. If the person so designated cannot be found at the address given in the last designation, such notice or process may be served upon the Director. SECTION 126. Disclaimers. — The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or services. SECTION 128. Single Registration for Goods and/or Services. — Where goods and/or services belonging to several classes of the Nice Classification have been included in one (1) application, such an application shall result in one registration. SECTION 130. Signature and Other Means of Self-Identification. — 130.1. Where a signature is required, the Office shall accept:

(a) (b)

A hand-written signature; or The use of other forms of signature, such as a printed or stamped signature, or the use of a seal instead of a hand-written signature: Provided, That where a seal is used, it should be accompanied by an indication in letters of the name of the signatory. 130.2. The Office shall accept communications to it by telecopier, or by electronic means subject to the conditions or requirements that will be prescribed by the Regulations. When communications are made by telefacsimile, the reproduction of the signature, or the reproduction of the seal together with, where required, the indication in letters of the name of the natural person whose seal is used, appears. The original communications must be received by the Office within thirty (30) days from date of receipt of the telefacsimile. 130.3. No attestation, notarization, authentication, legalization or other certification of any signature or other means of self-identification referred to in the preceding paragraphs, will be required, except, where the signature concerns the surrender of a registration. SECTION 124.2. The applicant or the registrant shall file a declaration of actual use of the mark with evidence to that effect, as prescribed by the Regulations within three (3) years from the filing date of the application. Otherwise, the application shall be refused or the mark shall be removed from the Register by the Director. SECTION 131. Priority Right. — 131.1. An application for registration of a mark filed in the Philippines by a person referred to in Section 3, and who previously duly filed an application for registration of the same mark in one of those countries, shall be considered as filed as of the day the application was first filed in the foreign country. 131.2. No registration of a mark in the Philippines by a person described in this section shall be granted until such mark has been registered in the country of origin of the applicant. 131.3. Nothing in this section shall entitle the owner of a registration granted under this section to sue for acts committed prior to the date on which his mark was registered in this country: Provided, That, notwithstanding the foregoing, the owner of a well-known mark as defined in Section 123.1(e) of this Act, that is not registered in the Philippines, may, against an identical or confusingly similar mark, oppose its registration, or petition the cancellation of its registration or sue for unfair competition, without prejudice to availing himself of other remedies provided for under the law. 131.4. In like manner and subject to the same conditions and requirements, the right provided in this section may be based upon a subsequent regularly filed application in the same foreign country: Provided, That any foreign application filed prior to such subsequent application has been withdrawn, abandoned, or otherwise disposed of, without having been laid open to public inspection and without leaving any rights outstanding, and has not served, nor thereafter shall serve, as a basis for claiming a right of priority. SECTION 239.2. Marks registered under Republic Act No. 166 shall remain in force but shall be deemed to have been granted under this Act and shall be due for renewal within the period provided for under this Act and, upon renewal shall be reclassified in accordance with the International Classification. Trade names and marks registered in the Supplemental Register under Republic Act No. 166 shall remain in force but shall no longer be subject to renewal. SECTION 127. Filing Date. — 127.1. Requirements. — The filing date of an application shall be the date on which the Office received the following indications and elements in English or Filipino: (a) An express or implicit indication that the registration of a mark is sought; (b) The identity of the applicant; (c) Indications sufficient to contact the applicant or his representative, if any; (d) A reproduction of the mark whose registration is sought; and (e) The list of the goods or services for which the registration is sought. 127.2. No filing date shall be accorded until the required fee is paid.

SECTION 132. Application Number and Filing Date. — 132.1. The Office shall examine whether the application satisfies the requirements for the grant of a filing date as provided in Section 127 and Regulations relating thereto. If the application does not satisfy the filing requirements, the Office shall notify the applicant who shall within a period fixed by the Regulations complete or correct the application as required, otherwise, the application shall be considered withdrawn. 132.2 Once an application meets the filing requirements of Section 127, it shall be numbered in the sequential order, and the applicant shall be informed of the application number and the filing date of the application will be deemed to have been abandoned. SECTION 133. Examination and Publication. — 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 the mark as defined in Section 121 is registrable under Section 123. 133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner. 133.3. If after the examination, the applicant is not entitled to registration for any reason, the Office shall advise the applicant thereof and the reasons therefor. The applicant shall have a period of four (4) months in which to reply or amend his application, which shall then be re-examined. The Regulations shall determine the procedure for the re-examination or revival of an application as well as the appeal to the Director of Trademarks from any final action by the Examiner. 133.4. An abandoned application may be revived as a pending application within three (3) months from the date of abandonment, upon good cause shown and the payment of the required fee. 133.5. The final decision of refusal of the Director of Trademarks shall be appealable to the Director General in accordance with the procedure fixed by the Regulations. SECTION 126. Disclaimers. — The Office may allow or require the applicant to disclaim an unregistrable component of an otherwise registrable mark but such disclaimer shall not prejudice or affect the applicant's or owner's rights then existing or thereafter arising in the disclaimed matter, nor such shall disclaimer prejudice or affect the applicant's or owner's right on another application of later date if the disclaimed matter became distinctive of the applicant's or owner's goods, business or services. SECTION 129. Division of Application. — Any application referring to several goods or services, hereafter referred to as the "initial application," may be divided by the applicant into two (2) or more applications, hereafter referred to as the "divisional applications," by distributing among the latter the goods or services referred to in the initial application. The divisional applications shall preserve the filing date of the initial application or the benefit of the right of priority. SECTION 133.2. Where the Office finds that the conditions referred to in Subsection 133.1 are fulfilled, it shall upon payment of the prescribed fee, forthwith cause the application, as filed, to be published in the prescribed manner. SECTION 134. Opposition. — Any person who believes that he would be damaged by the registration of a mark may, upon payment of the required fee and within thirty (30) days after the publication referred to in Subsection 133.2, file with the Office an opposition to the application. Such opposition shall be in writing and verified by the oppositor or by any person on his behalf who knows the facts, and shall specify the grounds on which it is based and include a statement of the facts relied upon. Copies of certificates of registration of marks registered in other countries or other supporting documents mentioned in the opposition shall be filed therewith, together with the translation in English, if not in the English language. For good cause shown and upon payment of the required surcharge, the time for filing an opposition may be extended by the Director of Legal Affairs, who shall notify the applicant of

such extension. The Regulations shall fix the maximum period of time within which to file the opposition. SECTION 135. Notice and Hearing. — Upon the filing of an opposition, the Office shall serve notice of the filing on the 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. SECTION 136. Issuance and Publication of Certificate. — When the period for filing the opposition has expired, or 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 of a certificate of registration, notice thereof making reference to the publication of the application shall be published in the IPO Gazette. SECTION 137. Registration of Mark and Issuance of a Certificate to the Owner or his Assignee. — 137.1. The Office shall maintain a Register in which shall be registered marks, numbered in the order of their registration, and all transactions in respect of each mark, required to be recorded by virtue of this law. 137.2. The registration of a mark shall include a reproduction of the mark and shall mention: its number; the name and address of the registered owner and, if the registered owner's address is outside the country, his address for service within the country; the dates of application and registration; if priority is claimed, an indication of this fact, and the number, date and country of the application, basis of the priority claims; the list of goods or services in respect of which registration has been granted, with the indication of the corresponding class or classes; and such other data as the Regulations may prescribe from time to time. 137.3. A certificate of registration of a mark may be issued to the assignee of the applicant: Provided, That the assignment is recorded in the Office. In case of a change of ownership, the Office shall at the written request signed by the owner, or his representative, or by the new owner, or his representative and upon a proper showing and the payment of the prescribed fee, issue to such assignee a new certificate of registration of the said mark in the name of such assignee, and for the unexpired part of the original period. 137.4. The Office shall record any change of address, or address for service, which shall be notified to it by the registered owner. 137.5. In the absence of any provision to the contrary in this Act, communications to be made to the registered owner by virtue of this Act shall be sent to him at his last recorded address and, at the same, at his last recorded address for service. SECTION 138. Certificates of Registration. — A certificate of registration of a mark shall be prima facie evidence of the validity of the registration, the 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 thereto specified in the certificate. SECTION 139. Publication of Registered Marks; Inspection of Register. — 139.1. The Office shall publish, in the form and within the period fixed by the Regulations, the marks registered, in the order of their registration, reproducing all the particulars referred to in Subsection 137.2. 139.2. Marks registered at the Office may be inspected free of charge and any person may obtain copies thereof at his own expense. This provision shall also be applicable to transactions recorded in respect of any registered mark. SECTION 144. Classification of Goods and Services. — 144.1. Each registration, and any publication of the Office which concerns an application or registration effected by the Office shall indicate the goods or services by their names, grouped according to the classes of the Nice Classification, and each group shall be preceded by the number of the class of that Classification to which that group of goods or services belongs, presented in the order of the classes of the said Classification.

144.2. Goods or services may not be considered as being similar or dissimilar to each other on the ground that, in any registration or publication by the Office, they appear in different classes of the Nice Classification. SECTION 4.2. The term "technology transfer arrangements" refers to contracts or agreements involving the transfer of systematic knowledge for the manufacture of a product, the application of a process, or rendering of a service including management contracts; and the transfer, assignment or licensing of all forms of intellectual property rights, including licensing of computer software except computer software developed for mass market. SECTION 145. Duration. — A certificate of registration shall remain in force for ten (10) years: Provided, That the registrant shall file a declaration of actual use and evidence to that effect, or shall show valid reasons based on the existence of obstacles to such use, as prescribed by the Regulations, within one (1) year from the fifth anniversary of the date of the registration of the mark. Otherwise, the mark shall be removed from the Register by the Office. SECTION 140. Cancellation upon Application by Registrant; Amendment or Disclaimer of Registration. — Upon application of the registrant, the Office may permit any registration to be surrendered for cancellation, and upon cancellation the appropriate entry shall be made in the records of the Office. Upon application of the registrant and payment of the prescribed fee, the Office for good cause may permit any registration to be amended or to be disclaimed in part: Provided, That the amendment or disclaimer does not alter materially the character of the mark. Appropriate entry shall be made in the records of the Office upon the certificate of registration or, if said certificate is lost or destroyed, upon a certified copy thereof. SECTION 142. Correction of Mistakes Made by the Office. — Whenever a material mistake in a registration incurred through the fault of the Office is clearly disclosed by the records of the Office, a certificate stating the fact and nature of such mistake shall be issued without charge, recorded and a printed copy thereof shall be attached to each printed copy of the registration. Such corrected registration shall thereafter have the same effect as the original certificate; or in the discretion of the Director of the Administrative, Financial and Human Resource Development Service Bureau a new certificate of registration may be issued without charge. All certificates of correction heretofore issued in accordance with the Regulations and the registration to which they are attached shall have the same force and effect as if such certificates and their issuance had been authorized by this Act. SECTION 143. Correction of Mistakes Made by Applicant. — Whenever a mistake is made in a registration and such mistake occurred in good faith through the fault of the applicant, the Office may issue a certificate upon the payment of the prescribed fee: Provided, That the correction does not involve any change in the registration that requires republication of the mark. SECTION 146. Renewal. — 146.1. A certificate of registration may be renewed for periods of ten (10) years at its expiration upon payment of the prescribed fee and upon filing of a request. The request shall contain the following indications: (a) An indication that renewal is sought; (b) The name and address of the registrant or his successor-in-interest, hereafter referred to as the "right holder"; (c) The registration number of the registration concerned; (d) The filing date of the application which resulted in the registration concerned to be renewed; (e) Where the right holder has a representative, the name and address of that representative; (f) The names of the recorded goods or services for which the renewal is requested or the names of the recorded goods or services for which the renewal is not requested, grouped according to the classes of the Nice Classification to which that group of

goods or services belongs and presented in the order of the classes of the said Classification; and (g) A signature by the right holder or his representative. 146.2. Such request shall be in Filipino or English and may be made at any time within six (6) months before the expiration of the period for which the registration was issued or renewed, or it may be made within six (6) months after such expiration on payment of the additional fee herein prescribed. 146.3. If the Office refuses to renew the registration, it shall notify the registrant of his refusal and the reasons therefor. 146.4. An applicant for renewal not domiciled in the Philippines shall be subject to and comply with the requirements of this Act. 6. RIGHTS CONFERRED SECTION 147. Rights Conferred. — 147.1. The owner of a registered mark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs or containers for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. 147.2. The exclusive right of the owner of a well-known mark defined in Subsection 123.1(e) which is registered in the Philippines, shall extend to goods and services which are not similar to those in respect of which the mark is registered: Provided, That use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered mark: Provided further, That the interests of the owner of the registered mark are likely to be damaged by such use. SECTION 148. Use of Indications by Third Parties for Purposes Other than those for which the Mark is Used. — Registration of the mark shall not confer on the registered owner the right to preclude third parties from using bona fide their names, addresses, pseudonyms, a geographical name, or exact indications concerning the kind, quality, quantity, destination, value, place of origin, or time of production or of supply, of their goods or services: Provided, That such use is confined to the purposes of mere identification or information and cannot mislead the public as to the source of the goods or services. 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. 149.2. Such assignment or transfer shall, however, be null and void if it is liable to mislead the public, particularly as regards the nature, source, manufacturing process, characteristics, or suitability for their purpose, of the goods or services to which the mark is applied. 149.3. The assignment of the application for registration of a mark, or of its registration, shall be in writing and require the signatures of the contracting parties. Transfers by mergers or other forms of succession may be made by any document supporting such transfer. 149.4. Assignments and transfers of registrations of marks shall be recorded at the Office on payment of the prescribed fee; assignment and transfers of applications for registration shall, on payment of the same fee, be provisionally recorded, and the mark, when registered, shall be in the name of the assignee or transferee. 149.5. Assignments and transfers shall have no effect against third parties until they are recorded at the Office. SECTION 150. License Contracts. — 150.1. Any license contract concerning the registration of a mark, or an application therefor, shall provide for effective control by the licensor of the quality of the goods or services of the licensee in connection with which the

mark is used. If the license contract does not provide for such quality control, or if such quality control is not effectively carried out, the license contract shall not be valid. 150.2. A license contract shall be submitted to the Office which shall keep its contents confidential but shall record it and publish a reference thereto. A license contract shall have no effect against third parties until such recording is effected. The Regulations shall fix the procedure for the recording of the license contract. a. Is there infringement even if the goods are not competing?

ANG TIBAY vs. TEODORO [G.R. No. 48226. December 14, 1942] Although two non-competing articles may be classified under two different classes by the Patent Office because they are deemed not to possess the same descriptive properties, they would nevertheless be held by the courts to belong to the same class if the simultaneous use on them of identical or closely similar trade-marks would be likely to cause confusion as to the origin, or personal source, of the second user’s goods. STA. ANA vs. MALIWAT [G.R. No. L-23023. August 31, 1968] Modern law recognizes that the protection to which the owner of a trademark is entitled is not limited to guarding his goods or business from actual market competition with identical or similar products of the parties, but extends to all cases in which the use by a junior appropriator of a trade-mark or trade-name is likely to lead to a confusion of source, as where prospective purchasers would be misled into thinking that the complaining party has extended his business into the field or is in any way connected with the activities of the infringer or when it forestalls the normal potential expansion of his business. Sec. 4, Rep. Act No. 166 does not require that the articles of manufacture of the previous user and the late user of the mark should possess the same descriptive properties or should fall into the same categories as to bar the latter from registering his mark in the principal register (Chua Che vs. Phil. Patent Office, et al., L-18337, 30 Jan. 1965). The meat of the matter is the likelihood of confusion, mistake or deception upon purchaser of the goods of the junior user of the mark and the goods manufactured by the previous user. PHILIPPINE REFINING CO., INC vs. NG SAM [G.R. No. L-26676. July 30, 1982] Emphasis should be on the similarity of the products involved and on the arbitrary classification or general description of their properties or characteristics. The particular goods of the parties are so unrelated that consumers would not in any probability mistake one as the source or origin of the product of the other. In addition, the goods of petitioners are basically derived from vegetable oil and animal fats, while the product of respondent is processed from pig's legs. A consumer would not reasonably assume that petitioner has so diversified its business as to include the product of respondent. Thus, the businesses of the parties are non-competitive and their products so unrelated that the use of identical trademarks is not likely to give rise to confusion, much less cause damage to petitioner. ESSO STANDARD EASTERN, INC. vs. COURT OF APPEALS [G.R. No. L-29971. August 31, 1982] As to whether trademark infringement exists depends for the most part upon whether or not the goods are so related that the public may be, or is actually, deceived and misled that they came from the same maker or manufacturer. For non-competing goods may be those which, though they are not in actual competition, are so related to each other that it might reasonably be assumed that they originate from one manufacturer. Non-competing goods may also be those which, being entirely unrelated, could not reasonably be assumed to have a common source. Goods are related when they belong to the same class or have the same descriptive

properties; when they possess the same physical attributes or essential characteristics with reference to their form, composition, texture or quality. They may also be related because they serve the same purpose or are sold in the same channels. The mere fact that one person has adopted and used a trademark on his goods does not prevent the adoption and use of the same trademark by others on unrelated articles of a different kind.

HICKOK MANUFACTURING CO., INC. vs. CA [G.R. No. L-44707. August 31, 1982] Taking into account the facts of record that petitioner, a foreign corporation registered the trademark for its diverse articles of men's wear such as wallets, belts, and men's briefs which are all manufactured here in the Philippines by licensee Quality House, Inc., but are so labelled as to give the misimpression that said goods are of foreign manufacture and that respondent secured its trademark registration exclusively for shoes and which are clearly labelled in block letters as 'made in Marikina, Rizal, Philippines', no error can be attributed to the appellate court in upholding respondent's registration of the same trademark for his unrelated and noncompeting product of Marikina shoes. FABERGE, INC. vs. INTERMEDIATE APPELLATE COURT [G.R. No. 71189. November 4, 1992] The certificate of registration issued by the Director of Patents can confer upon petitioner the exclusive right to use its own symbol only to those goods specified in the certificate, subject to any conditions and limitations stated therein. CANON KABUSHIKI KAISHA vs. COURT OF APPEALS [G.R. No. 120900. July 20, 2000] The paints, chemical products, toner and dyestuff of petitioner that carry the trademark CANON are unrelated to sandals, the product of private respondent. We agree with the BPTTT, following the Esso doctrine, when it noted that the two classes of products in this case flow through different trade channels. b. Issue of Parallel Importation

YU vs. COURT OF APPEALS [G.R. No. 86683. January 21, 1993] The right to perform an exclusive distributorship agreement and to reap the profits resulting from such performance are proprietary rights which a party may protect which may otherwise not be dismissed, nay, rendered illusory by the expedient act of utilizing or interposing a person or firm to obtain goods from the supplier to defeat the very purpose for which the exclusive distributorship was conceptualized, at the expense of the sole authorized distributor (citations omitted). 7. REMEDIES SECTION 3. International Conventions and Reciprocity. — Any person who is a national or who is domiciled or has a real and effective industrial establishment in a country which is a party to any convention, treaty or agreement relating to intellectual property rights or the repression of unfair competition, to which the Philippines is also a party, or extends reciprocal rights to nationals of the Philippines by law, shall be entitled to benefits to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of an intellectual property right is otherwise entitled by this Act. SECTION 160. Right of Foreign Corporation to Sue in Trademark or Service Mark Enforcement Action. — Any foreign national or juridical person who meets the requirements

of Section 3 of this Act and does not engage in business in the Philippines may bring a civil or administrative action hereunder for opposition, cancellation, infringement, unfair competition, or false designation of origin and false description, whether or not it is licensed to do business in the Philippines under existing laws. SECTION 231. Reverse Reciprocity of Foreign Laws. — Any condition, restriction, limitation, diminution, requirement, penalty or any similar burden imposed by the law of a foreign country on a Philippine national seeking protection of intellectual property rights in that country, shall reciprocally be enforceable upon nationals of said country, within Philippine jurisdiction.

LEVITON INDUSTRIES, et al. vs. SALVADOR [G.R. No. L-40163. June 19, 1982] Undoubtedly, Section 21-A of the Trademark Law (Republic Act No. 166) grants to a foreign corporation, whether or not licensed to do business in the Philippines, the right to seek redress for unfair competition before Philippine courts. But the said law is not without qualifications. Its literal tenor indicates as a condition sine qua non the registration of the trademark of the suing foreign corporation with the Philippine Patent Officer or, in the least, that it bean assignee of such registered trademark. The said section further requires that the country, of which the plaintiff foreign corporation or juristic person is a citizen or domicilliary, grants to Filipino corporations or juristic entities the same reciprocal treatment, either thru treaty, convention or law. PUMA vs. INTERMEDIATE APPELLATE COURT [G.R. No. 75067. February 26, 1988] A foreign corporation not doing business in the Philippines needs no license to sue before Philippine courts for infringement of trademark and unfair competition. A foreign corporation which has never done any business in the Philippines and which is unlicensed and unregistered to do business here, but is widely and favorably known in the Philippines through the use therein of its products bearing its corporate and trade name, has a legal right to maintain an action in the Philippines to restrain the residents and inhabitants thereof from organizing a corporation therein bearing the same name as the foreign corporation, when it appears that they have personal knowledge of the existence of such a foreign corporation, and it is apparent that the purpose of the proposed domestic corporation is to deal and trade in the same goods as those of the foreign corporation (citations omitted). LA CHEMISE LACOSTE, S. A. vs. FERNANDEZ [G.R. Nos. 63796-97. May 21, 1984] That company is not here seeking to enforce any legal or control rights arising from, or growing out of, any business which it has transacted in the Philippine Islands. The sole purpose of the action is to protect its reputation, its corporate name, its goodwill, whenever that reputation, corporate name or goodwill have, through the natural development of its trade, established themselves. Its rights to the use of its corporate and trade name is a property right, a right in rem, which it may assert and protect against all the world, in any of the courts of the world — even in jurisdictions where it does not transact business — just the same as it may protect its tangible property, real or personal, against trespass, or conversion. Since it is the trade and not the mark that is to be protected, a trade-mark acknowledges no territorial boundaries of municipalities or states or nations, but extends to every market where the trader's goods have become known and identified by the use of the mark (citations omitted).. In upholding the right of the petitioner to maintain the present suit before our courts for unfair competition or infringement of trademarks of a foreign corporation, we are moreover recognizing our duties and the rights of foreign states under the Paris Convention for the Protection of Industrial Property to which the Philippines and France are parties. We are

obligated to assure to nationals of "countries of the Union" an effective protection against unfair competition in the same way that they are obligated to similarly protect Filipino citizens and firms. Pursuant to this obligation, the Ministry of Trade on November 20, 1980 issued a memorandum addressed to the Director of the Patents Office directing the latter — ". . . reject all pending applications for Philippine registration of signature and other world famous trademarks by applicants other than its original owners or users. “The conflicting claims over internationally known trademarks involve such name brands as Lacoste, Jordache, Gloria Vanderbilt, Sasson, Fila, Pierre Cardin… "It is further directed that, in cases where warranted, Philippine registrants of such trademarks should be asked to surrender their certificates of registration, if any, to avoid suits for damages and other legal action by the trademarks' foreign or local owners or original users." The memorandum creates a legally binding obligation on the parties founded on the generally accepted principle of international law of pacta sunt servanda which has been adopted as part of the law of our land. The memorandum reminds the Director of Patents of his legal duty to obey both law and treaty. It must also be obeyed. a. Administrative

i.

Cancellation

SECTION 151. Cancellation. — 151.1. A petition to cancel a registration of a mark under this Act may be filed with the Bureau of Legal Affairs by any person who believes that he is or will be damaged by the registration of a mark under this Act as follows: (a) Within five (5) years from the date of the registration of the mark under this Act. (b) At any time, if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of this Act, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used. (n) (c)

At any time, if the registered owner of the mark without legitimate reason fails to use the mark within the Philippines, or to cause it to be used in the Philippines by virtue of a license during an uninterrupted period of three (3) years or longer. 151.2. Notwithstanding the foregoing provisions, the court or the administrative agency vested with jurisdiction to hear and adjudicate any action to enforce the rights to a registered mark shall likewise exercise 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 agency from assuming jurisdiction over a subsequently filed petition to cancel the same mark. On the other hand, the earlier filing of petition to cancel the mark with the Bureau of Legal Affairs shall not constitute a prejudicial question that must be resolved before an action to enforce the rights to same registered mark may be decided. SECTION 152. Non-use of a Mark When Excused. — 152.1. Non-use of a mark may be excused if caused by circumstances arising independently of the will of the trademark owner. Lack of funds shall not excuse non-use of a mark.

152.2. The use of the mark in a form different from the form in which it is registered, which does not alter its distinctive character, shall not be ground for cancellation or removal of the mark and shall not diminish the protection granted to the mark. 152.3. The use of a mark in connection with one or more of the goods or services belonging to the class in respect of which the mark is registered shall prevent its cancellation or removal in respect of all other goods or services of the same class. 152.4. The use of a mark by a company related with the registrant or applicant shall inure to the latter's benefit, and such use shall not affect the validity of such mark or of its registration: Provided, That such mark is not used in such manner as to deceive the public. If use of a mark by a person is controlled by the registrant or applicant with respect to the nature and quality of the goods or services, such use shall inure to the benefit of the registrant or applicant. SECTION 153. Requirements of Petition; Notice and Hearing. — Insofar as applicable, the petition for cancellation shall be in the same form as that provided in Section 134 hereof, and notice and hearing shall be as provided in Section 135 hereof. SECTION 154. Cancellation of Registration. — If the Bureau of Legal Affairs finds that a case for cancellation has been made out, it shall order the cancellation of the registration. When the order or judgment becomes final, any right conferred by such registration upon the registrant or any person in interest of record shall terminate. Notice of cancellation shall be published in the IPO Gazette. SECTION 230. Equitable Principles to Govern Proceedings. — In all inter partes proceedings in the Office under this Act, the equitable principles of laches, estoppel, and acquiescence where applicable, may be considered and applied. SECTION 232. Appeals. — 232.1. Appeals from decisions of regular courts shall be governed by the Rules of Court. Unless restrained by a higher court, the judgment of the trial court shall be executory even pending appeal under such terms and conditions as the court may prescribe. 232.2. Unless expressly provided in this Act or other statutes, appeals from decisions of administrative officials shall be provided in the Regulations. ROMERO vs. MAIDEN FORM BRASSIERE CO., INC. [G.R. No. L-18289. March 31, 1964] There, being no evidence of use of the mark by others before 1932, or that appellee abandoned use thereof, the registration of the mark was made in accordance with the Trademark Law. Granting that appellant used the mark when appellee stopped using it during the period of time that the Government imposed restrictions on importation of respondent's brassiere bearing the trademark, such temporary non-use did not affect the rights of appellee because it was occasioned by government restrictions and was not permanent, intentional, and voluntary. To work an abandonment, the disuse must be permanent and not ephemeral; it must be intentional and voluntary, and not involuntary or even compulsory. There must be a thoroughgoing discontinuance of any trade-mark use of the mark in question. The use of the trademark by other manufacturers did not indicate an intention on the part of appellee to abandon it. To establish the defense of abandonment, it is necessary to show not only acts indicating a practical abandonment, but an actual intent to abandon. BATA INDUSTRIES, LTD. vs. COURT OF APPEALS [G.R. No. L-53672. May 31, 1982] From the evidence, any slight goodwill generated by the Czechoslovakian product during the Commonwealth years was completely abandoned and lost in the more than 35 years that have passed since the liberation of Manila from the Japanese troops (adopting the findings of the Court of Appeals).

PHILIPPINE NUT INDUSTRY, INC. vs. STANDARD BRANDS INC. [G.R. No. L-23035. July 31, 1975] In cases involving infringement of trademarks, it has been held that there is infringement when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity; that whether or not a trademark causes confusion and likely to deceive the public is a question of fact which is to be resolved by applying the "test of dominancy," meaning, if the competing trademark contains the main or essential or dominant features of another by reason of which confusion and deception are likely to result, then infringement takes place; and that duplication or imitation is not necessary, a similarity of the dominant features of the trademark would be sufficient. In cases involving infringement of trademarks, there can be no better evidence as to what dominant feature of a label and as to whether there is a confusing similarity in the contesting trademarks than the labels themselves. A visual and graphic presentation of the labels will constitute the best argument for one or the other. Admittedly, no producer or manufacturer may have a monopoly of any color scheme or form of words in a label. But when a competitor adopts a distinctive or dominant mark or feature of another's trademark and with it makes use of the same color ensemble, employs similar words written in a style, type and size of lettering almost identical with those found in the other trademark, the intent to pass to the public his product as that of the other is quite obvious. The non-use of a trademark or an article of merchandise due to legal restrictions or circumstances beyond one's control is not to be considered as an abandonment. Said rule was correctly applied to the case at bar where the use of the trademark was interrupted during the Japanese occupation and in fact was discontinued when the importation of the product covered by the trademark was prohibited by the Central Bank Regulations. PAGASA INDUSTRIAL CORPORATION vs. CA [G.R. No. L-54158. November 19, 1982] The Trademark Law is very clear. It requires actual commercial use of the mark prior to its registration. There is no dispute that respondent corporation was the first registrant, yet it failed to fully substantiate its claim that it used in trade or business in the Philippines the subject mark; it did not present proof to invest it with exclusive, continuous adoption of the trademark which should consist among others, of considerable sales since its first use. The invoices submitted by respondent which were dated way back in 1957 show that the zippers sent to the Philippines were to be used as "samples" and "of no commercial value." The evidence for respondent must be clear, definite and free from inconsistencies. "Samples" are not for sale and therefore, the fact of exporting them to the Philippines cannot be considered to be equivalent to the "use" contemplated by the law. Respondent did not expect income from such "samples." There were no receipts to establish sale, and no proof were presented to show that they were subsequently sold in the Philippines. It appears that it was only after more than seven (7) years when respondent sought the cancellation of the trademark. An unreasonable length of time had already passed before respondent asserted its right to the trademark. There is a presumption of neglect already amounting to "abandonment" of a right after a party had remained silent for quite a long time during which petitioner had been openly using the trademark in question. Such inaction on the part of respondent entitles petitioner to the equitable principle of laches. WOLVERINE WORLDWIDE, INC.vs. COURT OF APPEALS [G.R. No. 78298. January 30, 1989] Between the earlier petitions and the present one there is substantial identity of parties, subject matter, and cause of action. The petitioner in all of these cases is Wolverine Worldwide, Inc. The respondent-registrant in this case is the assignee of Randelson Agro-Industrial Development, Inc. (formerly known as Randelson Shoes, Inc.) which in turn, acquired its right

from Ramon Angeles, the original respondents-registrant. As regards the subject matter, all of these cases refer to the cancellation of registration of the trademark HUSH PUPPIES and DEVICE of a Dog. Finally, there is identity of cause of action, which is the alleged wrongful or erroneous registration of the trademark res judicata now bars the petitioner from reopening, by way of . "Res judicata now bars the petitioner from reopening, by way of another petition for cancellation (the present Inter Partes Case No. 1807), the issue of ownership of the trademark HUSH PUPPIES. Otherwise, there will never be an end to litigation. MIRPURI vs. COURT OF APPEALS [G.R. No. 114508. November 19, 1999] IPC No. 2049 raised the issue of ownership of the trademark, the first registration and use of the trademark in the United States and other countries, and the international recognition and reputation of the trademark established by extensive use and advertisement of private respondent's products for over forty years here and abroad. These are different from the issues of confusing similarity and damage in IPC No. 686. The issue of prior use may have been raised in IPC No. 686 but this claim was limited to prior use in the Philippines only. Prior use in IPC No. 2049 stems from private respondent's claim as originator of the word and symbol "Barbizon," as the first and registered user of the mark attached to its products which have been sold and advertised worldwide for a considerable number of years prior to petitioner's first application for registration of her trademark in the Philippines. Indeed, these are substantial allegations that raised new issues and necessarily gave private respondent a new cause of action. Res judicata does not apply to rights, claims or demands, although growing out of the same subject matter, which constitute separate or distinct causes of action and were not put in issue in the former action. Respondent corporation also introduced in the second case a fact that did not exist at the time the first case was filed and terminated. The cancellation of petitioner's certificate of registration for failure to file the affidavit of use arose only after IPC No. 686. It did not and could not have occurred in the first case, and this gave respondent another cause to oppose the second application. Res judicata extends only to facts and conditions as they existed at the time judgment was rendered and to the legal rights and relations of the parties fixed by the facts so determined. It is also noted that the oppositions in the first and second cases are based on different laws. The opposition in IPC No. 686 was based on specific provisions of the Trademark Law, i.e., Section 4 (d) 70 on confusing similarity of trademarks and Section 8 on the requisite damage to file an opposition to a petition for registration. The opposition in IPC No. 2049 invoked the Paris Convention, particularly Article 6bis thereof, E.O. No. 913 and the two Memoranda of the Minister of Trade and Industry. This opposition also invoked Article 189 of the Revised Penal Code which is a statute totally different from the Trademark Law. Causes of action which are distinct and independent from each other, although arising out of the same contract, transaction, or state of facts, may be sued on separately, recovery on one being no bar to subsequent actions on others. SHANGRI-LA vs. COURT OF APPEALS [G.R. No. 111580. June 21, 2001] The earlier institution of an Inter Partes case by the Shangri-La Group for the cancellation of the "Shangri-La" mark and "S" device/logo with the BPTTT cannot effectively bar the subsequent filing of an infringement case by registrant Developers Group. The rationale is plain: Certificate of Registration No. 31904, upon which the infringement case is based, remains valid and subsisting for as long as it has not been cancelled by the Bureau or by an infringement court. As such, Developers Group's Certificate of Registration in the principal register continues as "prima facie evidence of the validity of the registration, the registrant's ownership of the mark or trade-name, and of the registrant's exclusive right to use the same in connection with the goods, business or services specified in the certificate." Since the certificate still subsists, Developers Group may thus file a corresponding infringement suit

and recover damages from any person who infringes upon the former's rights. Furthermore, the issue raised before the BPTTT is quite different from that raised in the trial court. The issue raised before the BPTTT was whether the mark registered by Developers Group is subject to cancellation, as the Shangri-La Group claims prior ownership of the disputed mark. On the other hand, the issue raised before the trial court was whether the Shangri-La Group infringed upon the rights of Developers Group within the contemplation of Section 22 of Republic Act 166. With the decision of the Regional Trial Court upholding the validity of the registration of the service mark "Shangri-La" and "S" logo in the name of Developers Group, the cancellation case filed with the Bureau hence becomes moot. To allow the Bureau to proceed with the cancellation case would lead to a possible result contradictory to that which the Regional Trial Court has rendered, albeit the same is still on appeal. Such a situation is certainly not in accord with the orderly administration of justice. In any event, the Court of Appeals has the competence and jurisdiction to resolve the merits of the said RTC decision. ii. Proceedings before the Bureau of Legal Affairs SECTION 10.2. (a) Exercise original jurisdiction in administrative complaints for violations of laws involving intellectual property rights: Provided, That its jurisdiction is limited to complaints where the total damages claimed are not less than Two hundred thousand pesos (P200,000): Provided further, That availment of the provisional remedies may be granted in accordance with the Rules of Court. The Director of Legal Affairs shall have the power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings. (b) After formal investigation, the Director for Legal Affairs may impose one (1) or more of the following administrative penalties: (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 within a reasonable time which shall be fixed in the order; (ii) The acceptance of a voluntary assurance of compliance or discontinuance as may be imposed. Such voluntary assurance may include one or more of the following: (1) An assurance to comply with the provisions of the intellectual property law violated; (2) (3) (4)

An assurance to refrain from engaging in unlawful and unfair acts and practices subject of the formal investigation; An assurance to recall, replace, repair, or refund the money value of defective goods distributed in commerce; and An assurance to reimburse the complainant the expenses and costs incurred in prosecuting the case in the Bureau of Legal Affairs.

The Director of Legal Affairs may also require the respondent to submit periodic compliance reports and file a bond to guarantee compliance of his undertaking; (iii) The condemnation or seizure of products which are subject of the offense. The goods seized hereunder shall be disposed of in such manner as may be deemed appropriate by the Director of Legal Affairs, such as by sale, donation to distressed local governments or to charitable or relief institutions, exportation, recycling into other goods, or any combination thereof, under such guidelines as he may provide; (iv) The forfeiture of paraphernalia and all real and personal properties which have been used in the commission of the offense; (v) The imposition of administrative fines in such amount as deemed reasonable by the Director of Legal Affairs, which shall in no case be less than Five thousand pesos (P5,000) nor more than One hundred fifty thousand pesos (P150,000). In addition, an additional fine of not more than One thousand pesos (P1,000) shall be imposed for each day of continuing violation; (vi) The cancellation of any permit, license, authority, or registration which may have been granted by the Office, or the suspension of the validity thereof for such period of time

as the Director of Legal Affairs may deem reasonable which shall not exceed one (1) year; (vii) The withholding of any permit, license, authority, or registration which is being secured by the respondent from the Office; (viii) The assessment of damages; (ix) Censure; andOther analogous penalties or sanctions. SECTION 232. Appeals. — 232.1. Appeals from decisions of regular courts shall be governed by the Rules of Court. Unless restrained by a higher court, the judgment of the trial court shall be executory even pending appeal under such terms and conditions as the court may prescribe. 232.2. Unless expressly provided in this Act or other statutes, appeals from decisions of administrative officials shall be provided in the Regulations. iii. Prohibition on importation SECTION 166. Goods Bearing Infringing Marks or Trade Names. — No article of imported merchandise which shall copy or simulate the name of any domestic product, or manufacturer, or dealer, or which shall copy or simulate a mark registered in accordance with the provisions of this Act, or shall bear a mark or trade name calculated to induce the public to believe that the article is manufactured in the Philippines, or that it is manufactured in any foreign country or locality other than the country or locality where it is in fact manufactured, shall be admitted to entry at any customhouse of the Philippines. In order to aid the officers of the customs service in enforcing this prohibition, any person who is entitled to the benefits of this Act, may require that his name and residence, and the name of the locality in which his goods are manufactured, a copy of the certificate of registration of his mark or trade name, to be recorded in books which shall be kept for this purpose in the Bureau of Customs, under such regulations as the Collector of Customs with the approval of the Secretary of Finance shall prescribe, and may furnish to the said Bureau facsimiles of his name, the name of the locality in which his goods are manufactured, or his registered mark or trade name, and thereupon the Collector of Customs shall cause one (1) or more copies of the same to be transmitted to each collector or to other proper officer of the Bureau of Customs. b. Civil

i. Infringement SECTION 155. Remedies; Infringement. — Any person who shall, without the consent of the owner of the registered mark: 155.1. Use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark or the same container or a dominant feature thereof in connection with the sale, offering for sale, distribution, advertising of any goods or services including other preparatory steps necessary to carry out the sale of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or 155.2. Reproduce, counterfeit, copy or colorably imitate a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, shall be liable in a civil action for infringement by the registrant for the remedies hereinafter set forth: Provided, That the infringement takes place at the moment any of the acts stated in Subsection 155.1 or this subsection are committed regardless of whether there is actual sale of goods or services using the infringing material. SECTION 156. Actions, and Damages and Injunction for Infringement. — 156.1. The owner of a registered mark may recover damages from any person who infringes his

rights, and the measure of the damages suffered shall be either the reasonable profit which the complaining party would have made, had the defendant not infringed his rights, or the profit which the defendant actually made out of the infringement, or in the event such measure of damages cannot be readily ascertained with reasonable certainty, then the court may award as damages a reasonable percentage based upon the amount of gross sales of the defendant or the value of the services in connection with which the mark or trade name was used in the infringement of the rights of the complaining party. 156.2. On application of the complainant, the court may impound during the pendency of the action, sales invoices and other documents evidencing sales. 156.3. In cases where actual intent to mislead the public or to defraud the complainant is shown, in the discretion of the court, the damages may be doubled. 156.4. The complainant, upon proper showing, may also be granted injunction. SECTION 157. Power of Court to Order Infringing Material Destroyed. — 157.1 In any action arising under this Act, in which a violation of any right of the owner of the registered mark is established, the court may order that goods found to be infringing be, without compensation of any sort, disposed of outside the channels of commerce in such a manner as to avoid any harm caused to the right holder, or destroyed; and all labels, signs, prints, packages, wrappers, receptacles and advertisements in the possession of the defendant, bearing the registered mark or trade name or any reproduction, counterfeit, copy or colorable imitation thereof, all plates, molds, matrices and other means of making the same, shall be delivered up and destroyed. 157.2. In regard to counterfeit goods, the simple removal of the trademark affixed shall not be sufficient other than in exceptional cases which shall be determined by the Regulations, to permit the release of the goods into the channels of commerce. SECTION 158. Damages; Requirement of Notice. — In any suit for infringement, the owner of the registered mark shall not be entitled to recover profits or damages unless the acts have been committed with knowledge that such imitation is likely to cause confusion, or to cause mistake, or to deceive. Such knowledge is presumed if the registrant gives notice that his mark is registered by displaying with the mark the words '"Registered Mark" or the letter R within a circle or if the defendant had otherwise actual notice of the registration. SECTION 159. Limitations to Actions for Infringement. — Notwithstanding any other provision of this Act, the remedies given to the owner of a right infringed under this Act shall be limited as follows: 159.1. Notwithstanding the provisions of Section 155 hereof, a registered mark shall have no effect against any person who, in good faith, before the filing date or the priority date, was using the mark for the purposes of his business or enterprise: Provided, That his right 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. 159.2. Where an infringer who is engaged solely in the business of printing the mark or other infringing materials for others is an innocent infringer, the owner of the right infringed shall be entitled as against such infringer only to an injunction against future printing. 159.3. Where the infringement complained of is contained in or is part of paid advertisement in a newspaper, magazine, or other similar periodical or in an electronic communication, the remedies of the owner of the right infringed as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers: Provided, That such injunctive relief shall not be available to the owner of the right infringed with respect to an issue of a newspaper, magazine, or other similar periodical or an electronic communication containing infringing matter where restraining the dissemination of such infringing matter in any particular issue of such periodical or in an electronic communication would delay the delivery of such issue or transmission of such electronic communication is customarily

conducted in accordance with the sound business practice, and not due to any method or device adopted to evade this section or to prevent or delay the issuance of an injunction or restraining order with respect to such infringing matter. SECTION 161. Authority to Determine Right to Registration. — In any action involving a registered mark, the court may determine the right to registration, order the cancellation of a registration, in whole or in part, and otherwise rectify the register with respect to the registration of any party to the action in the exercise of this. Judgment and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Bureau, and shall be controlled thereby. SECTION 163. Jurisdiction of Court. — All actions under Sections 150, 155, 164, and 166 to 169 shall be brought before the proper courts with appropriate jurisdiction under existing laws. SECTION 164. Notice of Filing Suit Given to the Director. — It shall be the duty of the clerks of such courts within one (1) month after the filing of any action, suit, or proceeding involving a mark registered under the provisions of this Act, to notify the Director in writing setting forth: the names and addresses of the litigants and designating the number of the registration or registrations and within one (1) month after the judgment is entered or an appeal is taken, the clerk of court shall give notice thereof to the Office, and the latter shall endorse the same upon the filewrapper of the said registration or registrations and incorporate the same as a part of the contents of said filewrapper. SECTION 232. Appeals. — 232.1. Appeals from decisions of regular courts shall be governed by the Rules of Court. Unless restrained by a higher court, the judgment of the trial court shall be executory even pending appeal under such terms and conditions as the court may prescribe. 232.2. Unless expressly provided in this Act or other statutes, appeals from decisions of administrative officials shall be provided in the Regulations. CONRAD AND COMPANY, INC. vs. COURT OF APPEALS [G.R. No. 115115. July 18, 1995] While an application for the administrative cancellation of a registered trademark on any of the grounds enumerated in Section 17 of Republic Act No. 166, as amended, otherwise known as the Trade-Mark Law, falls under the exclusive cognizance of BPTTT, an action, however, for infringement or unfair competition, as well as the remedy of injunction and relief for damages, is explicitly and unquestionably within the competence and jurisdiction of ordinary courts. Registration in the Principal Register gives rise to a presumption of validity of the registration and of the registrant's ownership and right to the exclusive use of the mark. It is precisely such a registration that can serve as the basis for an action for infringement. An invasion of this right entitles the registrant to court protection and relief. ETEPHA vs. DIRECTOR OF PATENTS [G.R. No. L-20635. March 31, 1966] The validity of a cause for infringement is predicated upon colorable imitation. The phrase "colorable imitation" denotes such a close or ingenious imitation as to be calculated to deceive ordinary persons, or such a resemblance to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other (citation omitted). A practical approach to the problem of similarity or dissimilarity is to go into the whole of the two trademarks pictured in their manner of display. Inspection should be undertaken from the viewpoint of prospective buyer. The trademark complained of should be compared and contrasted with the purchaser's memory (not in juxtaposition) of the trade mark said to be infringed. Some such factors as sound; appearance; form, style, shape, size or format; color;

ideas connoted by marks; the meaning, spelling, and pronunciation of words used; and the setting in which the words appear may be considered. For, indeed, trademark infringement is a form of unfair competition (citations omitted). Confusion is likely between trademarks only if their over-all presentations in any of the particulars of sound, appearance, or meaning are such as would lead the purchasing public into believing that the products to which the marks are applied emanated from the same source. In the solution of a trademark infringement problem, regard too should be given to the class of persons who buy the particular product and the circumstances ordinarily attendant to its acquisition. FRUIT OF THE LOOM, INC. vs. COURT OF APPEALS [G.R. No. L-32747. November 29, 1984] Infringement of trademark when the use of the mark involved would be likely to cause confusion or mistake in the mind of the public or to deceive purchasers as to the origin or source of the commodity In cases of this nature, there can be no better evidence as to whether there is a confusing similarity in the contesting trademarks than the labels or hang tags themselves. A visual presentation of the labels or hang tags is the best argument for one or the other ASIA BREWERY, INC. vs. COURT OF APPEALS [G.R. No. 103543. July 5, 1993] Infringement of trademark is a form of unfair competition. Infringement is determined by the "test of dominancy" rather than by differences or variations in the details of one trademark and of another. Similarity in size, form and color, while relevant, is not conclusive. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; not it is necessary that the infringing label should suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers (citations omitted). Nobody can acquire any exclusive right to market articles supplying simple human needs in containers or wrappers of the general form, size and character commonly and immediately used in marketing such articles A merchant cannot be enjoined from using a type or color of bottle where the same has the useful purpose of protecting the contents from the deleterious effects of light rays. What is all important is the name of the product written on the label of the bottle for that is how one beer may be distinguished from the others (citations omitted). Dissent (Cruz): The question is not whether the two articles are distinguishable by their labels when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it with the original. HEIRS OF ALMORADIE vs. COURT OF APPEALS [G.R. No. 91385. January 4, 1994] Glaring is the fact that the only difference in the above figures (referring to the packaging) is the "supposed origin" of the product ("Dr. Perez" as against "C.Y. Gabriel") which are not even as eye catching as the word "WONDER" itself. Apparently, Gabriel never used or adopted the trademark of Go Hay in her products, instead she has all along been using the trademark registered in the name of Perez. What is worse is that there is obvious bad faith on the part of Gabriel in acquiring the mark "Wonder GH."

Undoubtedly her intent in having the mark assigned to her is merely to give color to the use of the mark "WONDER" on her products. Particularly so since the Director of Patents denied the registration to Gabriel of the trademark "WONDER" because it was found that the mark was already in use and is owned by Dr. Jose Perez. Petitioner's argument that the word "Wonder" could not be appropriated exclusively as a trademark by private respondent has no leg to stand on. The matter restricting the exclusive use of a trademark is only true over unrelated goods. The law requires that in the adoption of a mark there should not be any likelihood of confusion, mistake or deception to the consumer. The only effect of cancellation is that it would deprive the registrant protection from infringement. AMIGO MANUFACTURING vs. CLUETT PEABODY CO., INC. [G.R. No. 139300. March 14, 2001] A resort to either the Dominancy Test or the Holistic Test shows that colorable imitation exists between respondent's "Gold Toe" and petitioner's "Gold Top." A glance at petitioner's mark shows that it definitely has a lot of similarities and in fact looks like a combination of the trademark and devices that respondent has already registered; namely, "Gold Toe," the representation of a sock with a magnifying glass, the "Gold Toe" representation and "linenized." Admittedly, there are some minor differences between the two sets of marks. The similarities, however, are of such degree, number and quality that the overall impression given is that the two brands of socks are deceptively the same, or at least very similar to each another. The names of the brands are similar — "Gold Top" and "Gold Toe." Moreover, it must also be considered that petitioner and respondent are engaged in the same line of business. In addition, these representations are at the same location, either in the sock itself or on the label. Let it be remembered that duly registered trademarks are protected by law as intellectual properties and cannot be appropriated by others without violating the due process clause. An infringement of intellectual rights is no less vicious and condemnable as theft of material property, whether personal or real. EMERALD GARMENT vs. COURT OF APPEALS [G.R. No. 100098. December 29, 1995] The essential element of infringement is colorable imitation. This term has been defined as such a close or ingenious imitation as to be calculated to deceive ordinary purchasers, or such resemblance of the infringing mark to the original as to deceive an ordinary purchaser giving such attention as a purchaser usually gives, and to cause him to purchase the one supposing it to be the other. Colorable imitation does not mean such similitude as amounts to identity. Nor does it require that all the details be literally copied. Colorable imitation refers to such similarity in form, content, words, sound, meaning, special arrangement, or general appearance of the trademark or tradename with that of the other mark or tradename in their over-all presentation or in their essential, substantive and distinctive parts as would likely mislead or confuse persons in the ordinary course of purchasing the genuine article (citations omitted). In determining whether colorable imitation exists, jurisprudence has developed two kinds of tests — the Dominancy Test applied in Asia Brewery, Inc. v. Court of Appeals and the Holistic Test developed in Del Monte Corporation v. Court of Appeals proponent cases. As its title implies, the test of dominancy focuses on the similarity of the prevalent features of the competing trademarks which might cause confusion or deception and thus constitutes infringement. If the competing trademark contains the main or essential or dominant features of another, and confusion and deception is likely to result, infringement takes place. Duplication or imitation is not necessary; nor it is necessary that the infringing label should

suggest an effort to imitate. The question at issue in cases of infringement of trademarks is whether the use of the marks involved would be likely to cause confusion or mistakes in the mind of the public or deceive purchasers. On the other side of the spectrum, the holistic test mandates that the entirety of the marks in question must be considered in determining confusing similarity. In determining whether the trademarks are confusingly similar, a comparison of the words is not the only determinant factor. The trademarks in their entirety as they appear in their respective labels or hang tags must also be considered in relation to the goods to which they are attached. The discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. The products involved in the case at bar are, in the main, various kinds of jeans. These are not your ordinary household. Accordingly, the casual buyer is predisposed to be more cautious and discriminating in and would prefer to mull over his purchase. Confusion and deception, then, is less likely. The average Filipino consumer generally buys his jeans by brand. He does not ask the sales clerk for generic jeans but for, say, a Levis, Guess, Wrangler or even an Armani. He is, therefore, more or less knowledgeable and familiar with his preference and will not easily be distracted. More credit should be given to the "ordinary purchaser." Cast in this particular controversy, the ordinary purchaser is not the "completely unwary consumer" but is the "ordinarily intelligent buyer" considering the type of product involved. The "ordinary purchaser" is defined as one accustomed to buy, and therefore to some extent familiar with, the goods in question (citations omitted). The test of fraudulent simulation is to be found in the likelihood of the deception of some persons in some measure acquainted with an established design and desirous of purchasing the commodity with which that design has been associated. The test is not found in the deception, or the possibility of deception, of the person who knows nothing about the design which has been counterfeited, and who must be indifferent between that and the other. The simulation, in order to be objectionable, must be such as appears likely to mislead the ordinary intelligent buyer who has a need to supply and is familiar with the article that he seeks to purchase. "LEE" is primarily a surname. Private respondent cannot, therefore, acquire exclusive ownership over and singular use of said term. It has been held that a personal name or surname may not be monopolized as a trademark or tradename as against others of the same name or surname. For in the absence of contract, fraud, or estoppel, any man may use his name or surname in all legitimate ways. DEL MONTE CORPORATION vs. COURT OF APPEALS [G.R. No. 78325. January 25, 1990] The question is not whether the two articles are distinguishable by their label when set side by side but whether the general confusion made by the article upon the eye of the casual purchaser who is unsuspicious and off his guard, is such as to likely result in his confounding it with the original. The general impression of the ordinary purchaser, buying under the normally prevalent conditions in trade and giving the attention such purchasers usually give in buying that class of goods is the touchstone. It has been held that in making purchases, the consumer must depend upon his recollection of the appearance of the product which he intends to purchase. The buyer having in mind the mark/label of the respondent must rely upon his memory of the petitioner's mark. Unlike the judge who has ample time to minutely examine the labels in question in the comfort of his sala, the ordinary shopper does not enjoy the same opportunity. It has also been held that it is not the function of the court in cases of infringement and unfair competition to educate purchasers but rather to take their carelessness for granted, and to be ever conscious of the fact that marks need not be identical. A confusing similarity will justify the intervention of equity. The judge must also be aware of the fact that usually a defendant in

cases of infringement does not normally copy but makes only colorable changes. Well has it been said that the most successful form of copying is to employ enough points of similarity to confuse the public with enough points of difference to confuse the courts. What essentially determines the attitude of the purchaser, specifically his inclination to be cautious, is the cost of the goods. Expensive and valuable items are normally bought only after deliberate, comparative and analytical investigation. But mass products, low priced articles in wide use, and matters of everyday purchase requiring frequent replacement are bought by the casual consumer without great care. At that, even if the labels were analyzed together it is not difficult to see that the Sunshine label is a colorable imitation of the Del Monte trademark. It has been aptly observed that the ultimate ratio in cases of grave doubt is the rule that as between a newcomer who by the confusion has nothing to lose and everything to gain and one who by honest dealing has already achieved favor with the public, any doubt should be resolved against the newcomer inasmuch as the field from which he can select a desirable trademark to indicate the origin of his product is obviously a large one (citations omitted). SOCIETE DES PRODUITS NESTLE, S.A. vs. COURT OF APPEALS [G.R. No. 112012. April 4, 2001] The test of similarity is to consider the two marks in their entirety, as they appear in the respective labels, in relation to the goods to which they are attached. The mark must be considered as a whole and not as dissected. If the buyer is deceived, it is attributable to the marks as a totality, not usually to any part of it. Be it further emphasized that the discerning eye of the observer must focus not only on the predominant words but also on the other features appearing in both labels in order that he may draw his conclusion whether one is confusingly similar to the other. The application of the totality or holistic test is improper since the ordinary purchaser would not be inclined to notice the specific features, similarities or dissimilarities, considering that the product is an inexpensive and common household item. It must be emphasized that the products bearing the trademarks in question are "inexpensive and common" household items bought off the shelf by "undiscerningly rash" purchasers. As such, if the ordinary purchaser is "undiscerningly rash", then he would not have the time nor the inclination to make a keen and perceptive examination of the physical discrepancies in the trademarks of the products in order to exercise his choice. This Court believes that the dominancy test is more suitable to this case in light of its peculiar factual milieu. Moreover, the totality or holistic test is contrary to the elementary postulate of the law on trademarks and unfair competition that confusing similarity is to be determined on the basis of visual, aural, connotative comparisons and overall impressions engendered by the marks in controversy as they are encountered in the realities of the marketplace. The totality or holistic test only relies on visual comparison between two trademarks whereas the dominancy test relies not only on the visual but also on the aural and connotative comparisons and overall impressions between the two trademarks. Cases on bottles and containers CAGAYAN VALLEY ENTERPRISES, INC vs. CA [G.R. No. 78413. November 8, 1989] The mere use of registered bottles or containers without the written consent of the manufacturer is prohibited, the only exceptions being when they are used as containers for "sisi," "bagoong," "patis" and similar native products. The omitted words "property of" are not of such vital indispensability such that the omission

thereof will remove the bottles from the protection of the law. The owner of a trade-mark or trade-name, and in this case the marked containers, does not abandon it by making minor modifications in the mark or name itself. With much more reason will this be true where what is involved is the mere omission of the words "property of" since even without said words the ownership of the bottles is easily identifiable. The words "La Tondeña. Inc." and "Ginebra San Miguel" stamped on the bottles, even without the words "property of," are sufficient notice to the public that those bottles so marked are owned by LTI. DISTILLERIA WASHINGTON, INC. vs. COURT OF APPEALS [G.R. No. 120961. October 17, 1996] Scarcely disputed are certain and specific industry practices in the sale of gin: The manufacturer sell the product in marked containers, through dealers, to the public in supermarkets, grocery shops, retail stores and other sales outlets. The buyer takes the item; he is neither required to return the bottle nor required to make a deposit to assure its return to the seller. He could return the bottle and get a refund. A number of bottles at time find their way to commercial users. It cannot be gainsaid that ownership of the containers does pass on to the consumer albeit subject to the statutory limitations on the use of the registered containers and to the trademark rights of the registrant. LTDI's sales invoice, stipulating that the "sale does not include the bottles with the blown-in marks of ownership of La Tondeña Distillers," cannot affect those who are not privies thereto. DISTILLERIA WASHINGTON, INC. vs. LA TONDEÑA DISTILLERS, INC. [G.R. No. 120961. October 2, 1997] La Tondeña not only sold its gin products but also the marked bottles or containers, as well. And when these products were transferred by way of sale, then ownership over the bottles and all its attributes (jus utendi, jus abutendi, jus fruendi, jus disponendi) passed to the buyer. It necessarily follows that the transferee has the right to possession of the bottles unless he uses them in violation of the original owner's registered or incorporeal rights. Since the Court has found that the bottles have been transferred by way of sale, then La Tondeña has relinquished all its proprietary rights over the bottles in favor of Distilleria Washington who has obtained them in due course. Now as owner, it can exercise all attributes of ownership over the bottles. This is the import of the decision that La Tondeña had transferred ownership over its marked bottles or containers when it sold its gin products to the public. TWIN ACE HOLDINGS CORPORATION vs. CA [G.R. No. 123248. October 16, 1997] Republic Act No. 623, "An Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels and Other Similar Containers," as amended by RA No. 5700, was meant to protect the intellectual property rights of the registrants of the containers and prevent unfair trade practices and fraud on the public. However, the exemption granted in Sec. 6 thereof was deemed extremely necessary to provide assistance and incentive to the backyard, cottage and small-scale manufacturers of indigenous native products such as patis, sisi and toyo who do not have the capital to buy brand new bottles as containers nor afford to pass the added cost to the majority of poor Filipinos who use the products as their daily condiments or viands. Petitioner cannot seek refuge in Sec. 5 12 of RA No. 623 to support its claim of continuing ownership over the subject bottles. In United States v. Manuel we held that since the purchaser at his discretion could either retain or return the bottles, the transaction must be regarded as a sale of the bottles when the purchaser actually exercised that discretion and decided not to return them to the vendor. We also take judicial notice of the standard practice today that the cost of the container is included in the selling price of the product such that the buyer of liquor or any such product from any store is not required to return the bottle nor is the liquor placed in a plastic container that possession of the bottle is retained by the store.

ii. Unfair competition SECTION 168. Unfair Competition, Rights, Regulation and Remedies. — 168.1. A person who has identified in the mind of the public the goods he manufactures or deals in, his business or services from those of others, whether or not a registered mark is employed, has a property right in the goodwill of the said goods, business or services so identified, which will be protected in the same manner as other property rights. 168.2. Any person who shall employ deception or any other means contrary to good faith by which he shall pass off the goods manufactured by him or in which he deals, or his business, or services for those of the one having established such goodwill, or who shall commit any acts calculated to produce said result, shall be guilty of unfair competition, and shall be subject to an action therefor. 168.3. In particular, and without in any way limiting the scope of protection against unfair competition, the following shall be deemed guilty of unfair competition: (a) Any person, who is selling his goods and gives them the general appearance of goods of another manufacturer or dealer, either as to the goods themselves or in the wrapping of the packages in which they are contained, or the devices or words thereon, or in any other feature of their appearance, which would be likely to influence purchasers to believe that the goods offered are those of a manufacturer or dealer, other than the actual manufacturer or dealer, or who otherwise clothes the goods with such appearance as shall deceive the public and defraud another of his legitimate trade, or any subsequent vendor of such goods or any agent of any vendor engaged in selling such goods with a like purpose; (b) Any person who by any artifice, or device, or who employs any other means calculated to induce the false belief that such person is offering the services of another who has identified such services in the mind of the public; or (c) Any person who shall make any false statement in the course of trade or who shall commit any other act contrary to good faith of a nature calculated to discredit the goods, business or services of another. 168.4. The remedies provided by Sections 156, 157 and 161 shall apply mutatis mutandis. SECTION 232. Appeals. — 232.1. Appeals from decisions of regular courts shall be governed by the Rules of Court. Unless restrained by a higher court, the judgment of the trial court shall be executory even pending appeal under such terms and conditions as the court may prescribe. 232.2. Unless expressly provided in this Act or other statutes, appeals from decisions of administrative officials shall be provided in the Regulations. DEL MONTE CORPORATION vs. COURT OF APPEALS [G.R. No. 78325. January 25, 1990] Distinctions between infringement of trademark and unfair competition: • Infringement of trademark is the unauthorized use of trademark, whereas unfair competition is the passing off of one’s goods as those of another; • In infringement fraudulent intent is unnecessary, whereas in unfair competition fraudulent intent is necessary; and • In infringement the prior registration of the trademark is a prerequisite to the action, whereas in unfair competition registration is not necessary. PRO LINE SPORTS CENTER, INC. vs. COURT OF APPEALS [G.R. No. 118192. October 23, 1997] The existence of probable cause for unfair competition by UNIVERSAL is derivable from. the facts and circumstances of the case. The affidavit of Graciano Lacanaria, a former employee of UNIVERSAL, attesting to the illegal sale and manufacture of "Spalding" balls and seized

"Spalding" products and instruments from UNIVERSAL's factory was sufficient prima facie evidence to warrant the prosecution of private respondents. That a corporation other than the certified owner of the trademark is engaged in the unauthorized manufacture of products bearing the same trademark engenders a reasonable belief that a criminal offense for unfair competition is being committed. UNIVERSAL RUBBER PRODUCTS, INC. vs. CA [G.R. No. L-30266. June 29, 1984] As a general rule, on obtaining an injunction for infringement of trademark, complainant is entitled to an accounting and recovery of defendant's profits on the goods sold under that mark, as incident to, and a part of, his property right, and this rule applies in cases of unfair competition. In such case, the infringer or unfair trader is required in equity to account for and yield up his gains on a principal analogous to that which charges as trustee with the profits acquired by the wrongful use of the property of the cestui que trust, and defendant's profits are regarded as an equitable measure of the compensation plaintiff should receive for the past harm suffered by him. The complaint for unfair competition is basically a suit for "injunction and damages" (Sec. 23, R.A. 166). Injunction for the purpose of enjoining the unlawful competitor from proceeding further with the unlawful competition and damages, in order to allow the aggrieved party to recover the damage he has suffered by virtue of the said unlawful competition. CONVERSE RUBBER CORP. vs. JACINTO RUBBER & PLASTICS CO., INC. [G.R. Nos. L27425 & L-30505. April 28, 1980] We find the shoes manufactured by defendants to contain, as found by the trial court, practically all the features of those of the plaintiff Converse Rubber Corporation and manufactured, sold or marketed by plaintiff Edwardson Manufacturing Corporation, except for their respective brands, of course. The respective designs, shapes, the colors of the ankle patches, the bands, the toe patch and the soles of the two products are exactly the same such that at a distance of a few meters, it is impossible to distinguish "Custombuilt" from "Chuck Taylor". These elements are more than sufficient to serve as basis for a charge of unfair competition. Even if not all the details just mentioned were identical, with the general appearances alone of the two products, any ordinary, or even perhaps even a not too perceptive and discriminating customer could be deceived, and, therefore, Custombuilt could easily be passed off for Chuck Taylor. As trade has developed and commercial changes have come about, the law of unfair competition has expanded to keep pace with the times and the elements of strict competition in itself has ceased to be the determining factor. The owner of a trademark or trade-name has property right in which he is entitled to protection, since there is damage to him from confusion of reputation or goodwill in the mind of the public as well as from confusion of goods. The modern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as fraud (citation omitted). SOLID TRIANGLE SALES CORPORATION vs. SHERIFF [G.R. No. 144309. November 23, 2001] The evidence presented before the trial court does not prove unfair competition under Section 168 of the Intellectual Property Code. Sanly Corporation did not pass off the subject goods as that of another. Indeed, it admits that the goods are genuine Mitsubishi photographic paper, which it purchased from a supplier in Hong Kong. iii. Action for false or fraudulent Declaration SECTION 162. Action for False or Fraudulent Declaration. — Any person who shall procure registration in the Office of a mark by a false or fraudulent declaration or

representation, whether oral or in writing, or by any false means, shall be liable in a civil action by any person injured thereby for any damages sustained in consequence thereof. SECTION 163. Jurisdiction of Court. — All actions under Sections 150, 155, 164, and 166 to 169 shall be brought before the proper courts with appropriate jurisdiction under existing laws. SECTION 164. Notice of Filing Suit Given to the Director. — It shall be the duty of the clerks of such courts within one (1) month after the filing of any action, suit, or proceeding involving a mark registered under the provisions of this Act, to notify the Director in writing setting forth: the names and addresses of the litigants and designating the number of the registration or registrations and within one (1) month after the judgment is entered or an appeal is taken, the clerk of court shall give notice thereof to the Office, and the latter shall endorse the same upon the filewrapper of the said registration or registrations and incorporate the same as a part of the contents of said filewrapper. SECTION 232. Appeals. — 232.1. Appeals from decisions of regular courts shall be governed by the Rules of Court. Unless restrained by a higher court, the judgment of the trial court shall be executory even pending appeal under such terms and conditions as the court may prescribe. 232.2. Unless expressly provided in this Act or other statutes, appeals from decisions of administrative officials shall be provided in the Regulations. c. Criminal

SECTION 170. Penalties. — Independent of the civil and administrative sanctions imposed by law, a criminal penalty of imprisonment from two (2) years to five (5) years and a fine ranging from Fifty thousand pesos (P50,000) to Two hundred thousand pesos(P200,000), shall be imposed on any person who is found guilty of committing any of the acts mentioned in Section 155, Section 168 and Subsection 169.1. SY vs. COURT OF APPEALS [G.R. No. L-37494. March 30, 1982] In the opinion of the trial court, the first information did not properly charge the offense of infringement of trademark, for what was expressly charged was unfair competition. Therefore, there is no double jeopardy even on the premise tat “registration” is not an essential element of the offense charged.

TRADENAMES

1. DEFINITION SECTION 121.3. "Trade name" means the name or designation identifying or distinguishing an enterprise; (Sec. 38, R.A. No. 166a) CONVERSE RUBBER vs. UNIVERSAL RUBBER [G.R. No. L-27906. January 8, 1987] A trade name is any individual name or surname, firm name, device or word used by

manufacturers, industrialists, merchants and others to identify their businesses, vocations or occupations. As the trade name refers to the business and its goodwill the trademark refers to the goods. The ownership of a trademark or tradename is a property right which the owner is entitled to protect since there is damage to him from confusion or reputation or goodwill in the mind of the public as well as from confusion of goods. The modern trend is to give emphasis to the unfairness of the acts and to classify and treat the issue as fraud (citations omitted). 2. WHAT MAY NOT BE USED AS A TRADE NAME? SECTION 165. Trade Names or Business Names. — 165.1. A name or designation may not be used as a trade name if by its nature or the use to which such name or designation may be put, it is contrary to public order or morals and if, in particular, it is liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. 3. RIGHTS OF TRADE NAME OWNER SECTION 165.2. (a) Notwithstanding any laws or regulations providing for any obligation to register trade names, such names shall be protected, even prior to or without registration, against any unlawful act committed by third parties. (b) In particular, any subsequent use of the trade name by a third party, whether as a trade name or a mark or collective mark, or any such use of a similar trade name or mark, likely to mislead the public, shall be deemed unlawful. 165.3. The remedies provided for in Sections 153 to 156 and Sections 166 and 167 shall apply mutatis mutandis. 165.4. Any change in the ownership of a trade name shall be made with the transfer of the enterprise or part thereof identified by that name. The provisions of Subsections 149.2 to 149.4 shall apply mutatis mutandis. PHILIPS EXPORT B.V. vs. COURT OF APPEALS [G.R. No. 96161. February 21, 1992] A corporation's right to use its corporate and trade name is a property right, a right in rem, which it may assert and protect against the world in the same manner as it may protect its tangible property, real or personal, against trespass or conversion. It is regarded, to a certain extent, as a property right and one which cannot be impaired or defeated by subsequent appropriation by another corporation in the same field. A name is peculiarly important as necessary to the very existence of a corporation. Its name is one of its attributes, an element of its existence, and essential to its identity. The general rule as to corporations is that each corporation must have a name by which it is to sue and be sued and do all legal acts. The name of a corporation in this respect designates the corporation in the same manner as the name of an individual designates the person; and the right to use its corporate name is as much a part of the corporate franchise as any other privilege granted. The right to the exclusive use of a corporate name with freedom from infringement by similarity is determined by priority of adoption. In determining the existence of confusing similarity in corporate names, the test is whether the similarity is such as to mislead a person using ordinary care and discrimination. In so doing, the Court must look to the record as well as the names themselves. It is settled, however, that proof of actual confusion need not be shown. It suffices that confusion is probably or likely to occur. The subsequent appropriator of the name or one confusingly similar thereto usually seeks an unfair advantage, a free ride on another's goodwill. A corporation has an exclusive right to the use of its name, which may be protected by injunction upon a principle similar to that upon which persons are protected in the use of

trademarks and tradenames. Such principle proceeds upon the theory that it is a fraud on the corporation which has acquired a right to that name and perhaps carried on its business thereunder, that another should attempt to use the same name, or the same name with a slight variation in such a way as to induce persons to deal with it in the belief that they are dealing with the corporation which has given a reputation to the name. ARMCO STEEL CORPORATION vs. SEC [G.R. No. L-54580. December 29, 1987] The Court finds that the said amendment in the corporate name of petitioner is not in substantial compliance with the order of February 14, 1975. Indeed it is in contravention therewith. To repeat, the order was for the removal of the word "ARMCO" from the corporate name of the petitioner which it failed to do. And even if this change of corporate name was erroneously accepted and approved in the SEC it cannot thereby legalize nor change what is clearly unauthorized if not contemptuous act of petitioner in securing the registration of a new corporate name against the very order of the SEC of February 14, 1975. Certainly the said order of February 14, 1975 is not rendered functus oficio thereby. Had petitioner revealed at the time of the registration of its amended corporate name that there was the said order, the registration of the amended corporate name could not have been accepted and approved by the persons in-charge of the registration. The actuations in this respect of petitioner are far from regular much less in good faith. ARMCO STEEL-PHILIPPINES, has not only an identical name but also a similar line of business, as shown above, as that of ARMCO STEEL-OHIO. People who are buying and using products bearing the trademark 'Armco' might be led to believe that such products are manufactured by the respondent, when in fact, they might actually be produced by the petitioners. Thus, the goodwill that should grow and inure to the benefit of petitioners could be impaired and prejudiced by the continued use of the same term by the respondent (quoting the SEC). WESTERN EQUIPMENT AND SUPPLY COMPANY vs. REYES [G.R. No. 27897. December 2, 1927] The right to the use of the corporate and trade name of a foreign corporation is a property right, a right in rem, which it may assert and protect in any of the courts of the world even in countries where it does not personally transact any business. In such a case, it is the trade and not the mark that is to be protected, and a trade-mark does not acknowledge any territorial boundaries, but extends to every market where the trader's goods have become known and identified by the use of the mark.

COLLECTIVE MARKS

1. DEFINITION SECTION 121.2. "Collective mark" means any visible sign designated as such in the application for registration and capable of distinguishing the origin or any other common characteristic, including the quality of goods or services of different enterprises which use the sign under the control of the registered owner of the collective mark. 2. REGISTRATION SECTION 167. Collective Marks. — 167.1. Subject to Subsections 167.2 and 167.3, Sections 122 to 164 and 166 shall apply to collective marks, except that references therein to "mark" shall be read as "collective mark". 167.2. (a) An application for registration of a collective mark shall designate the mark as a collective mark and shall be accompanied by a copy of the agreement, if any, governing the use of the collective mark. (b) The registered owner of a collective mark shall notify the Director of any changes made in respect of the agreement referred to in paragraph (a). 167.3. In addition to the grounds provided in Section 149, the Court shall cancel the registration of a collective mark if the person requesting the cancellation proves that only the registered owner uses the mark, or that he uses or permits its use in contravention of the agreements referred to in Subsection 166.2 or that he uses or permits its use in a manner liable to deceive trade circles or the public as to the origin or any other common characteristics of the goods or services concerned. 167.4. The registration of a collective mark, or an application therefor shall not be the subject of a license contract.