INTELLECTUAL PROPERTY CODE

PATENTS

What is a patent?

- It is an exclusive right granted to an inventor over an invention or a utility model or

industrial design to sell, use, and make the same for commerce and industry.

What is the purpose of the patent law?

Three-Fold Purpose:
1. The patent law seeks to Foster and reward invention;
2. It Promotes disclosures of inventions to stimulate further innovation and to permit the
public to practice the invention once the patent expires; and
3. It seeks to Ensure that ideas in the public domain remain there for the free use of the
public

Patentable inventions
What are the 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.

What are the requisites for the patentability of an invention?

- The requisites are derived from the definition of a patentable invention itself. They
are: a) novelty or newness; b) an inventive step; and c) industrial applicability.

Non-patentable Inventions
What are the non-patentable inventions?
[Link], scientific theories and mathematical methods, and in the case of drugs and
medicines, the mere discovery of a new form or new property of a known substance which
does not result in the enhancement of the known efficacy of that substance, or the mere
discovery of any new property or new use for a known substance, or the mere use of a
known process unless such known process results in a new product that employs at least
one new reactant.

[Link], rules and methods of performing mental acts, playing games or doing business,
and programs for computers;

[Link] 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

[Link] varieties or animal breeds or essentially biological process for the production of
plants or animals.

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[Link] creations

6. Anything which is contrary to public order or morality.

What is "inventive step" as an element of patentability?

- An invention involves 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.
Define novelty as an element of patentability.
- An invention shall be considered new if it does not form part of a prior art.
Prior Art
- 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
- 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.

EXCEPTION TO PRIOR ART

- Non-Prejudicial Disclosure The disclosure of information contained in the application
during the 12 months preceding the filing date or the priority date of application shall
not prejudice the applicant on the ground of lack of novelty, if such disclosure was
made by: The Investor, Patent office and the information was contained and the third
party.

What is industrial applicability as an element of patentability?

- An invention that can be produced and used in any industry.

RIGHT TO A PATENT
Who has a right to a patent?
- The right to a patent belongs to the inventor, his heirs or assigns. When two or more
persons have jointly made an invention, the right to a patent shall belong to them
jointly.

INVENTION CREATED PURSUANT TO A COMMISSION

Who owns inventions created pursuant to a commission but not under an employer-
employee relationship?
- The person who commissions the work shall own the patent, unless otherwise
provided in the contract.56 This is different from copyright where the work is owned
by the one who commissioned it but the copyright belongs to the author or creator.

How about those inventions created by an employee?

- In case the employee made the invention in the course of his employment contract,
the patent shall belong to: a) the employee, ifthe inventive activity is not a part of his
regular duties even ifthe employee uses the time, facilities and materials of the
employer; b) the employer, if the invention is the result of the performance of his

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 regularly-assigned duties, unless there is an agreement, express or implied, to the
contrary.

FIRST-TO-FILE RULE
What is the "First to File Rule" under the law on patent?
- If two 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 (IPC, Sec.
29)

RIGHT TO PRIORITY
What is the "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:
1. The local application expressly claims priority;
2. It is filed within 12 months from the date of the earliest foreign application; and
3.A certified copy of the foreign application, with an English translation, is filed within
six (6) months from the date of Philippine application.

GROUNDS FOR CANCELLATION OF A PATENT

What are the grounds for cancellation of patents?
1. the invention is not new or patentable;
2. 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;
3. the patent is contrary to public order or morality,or granted when the product or the
process is non-patentable.
Where the grounds for cancellation relate to some of the claims or parts of the claim,
cancellation may be effected to such extent only.

Cancellation of patent
- The rights conferred by the patent shall terminate. That the patent is granted not in
favor of the true and actual inventor is not a ground for cancellation of patent.

e. Remedy of the true and actual inventor

1. What are the remedies of a person declared by final court order as having the right
to the patent?
- if someone other than the applicant is declared to have the right to a patent, they
have (3) months to (a) continue the application as their own, (b) file a new application
for the same invention, (c) request refusal of the original application, or (d) seek the
cancellation if a patent was already granted.
2. What are the remedies of the true and actual inventor deprived of the patent?

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 - If a person is declared by final court decision to be the true inventor who was
deprived of the patent by fraud or without consent, the court may order his
substitution as patentee or cancel the patent and may also award damages. Only the
patentee or successors-in-interest can sue for infringement—not the true inventor
unless declared as patentee. The true inventor must file a court case, not a petition
with the IPO, to be declared patentee. If fraud or lack of consent is proven,
cancellation may be requested immediately upon finality of judgment; otherwise, the
inventor must wait three (3) months after the decision to seek cancellation.

f. Rights conferred by a patent

1. What are the rights conferred by a patent?
a. Where the subject matter is a product. Prevent others from making, using, selling,
offering for sale, or importing a patented product without permission
b. Where the subject matter is a process, to restrain or prevent others from using a
patented process or dealing with products made directly or indirectly from such process.
*Patent owner also has the right to assign or transfer the patent and enter into
licensing agreements.

2. What is the term of a patent?

- The term of a patent shall be 20 years from the filing date of the application. The term
is not subject to extension

3. What is the significance of the term of patent?

- a patent has the exclusive right to make, use, and sell the patented product or use
the patented process for industrial or commercial purposes within the Philippines
during the patent term. Unauthorized acts by others during the patent term constitute
infringement. These rights expire once the term ends.

g. What are the limitations to patent rights?

1. What are the limitations to patent rights? - The owner of a patent has no right to
prevent third parties from performing without his authorization the acts of making, using,
offering to sell, selling and importing the patented product or process in the following
circumstances.
a. Using of a patented product which has been put on the market in the Philippines
by the owner or with the owner’s consent, insofar as such use is performed after the product
has been put on the market; With regard to drugs and medicine, this applies after their
release locally or globally, and both private and government parties may import them.
Acts done privately and for non-commercial purposes are allowed, as long as they
don’t significantly harm the patent owner’s economic interests.
c. where the act consists of using exclusively for experimental use of the invention for
scientific purposes or educational purposes and other related activities.
d. In the case of drugs and medicine, acts like testing, using, making, or selling for
the purpose of securing regulatory approval are allowed. To Protect the original patent
holder’s data from unfair use under the Trade-related Aspects of Intellectual Property Rights
(TRIPS), the Intellectual Property Office (IPO) must issue rules within 120 days of the law’s
enactment.

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 e. 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
f. Where the invention is used in any vessel or land vehicle of any other country
entering the territory of the Philippines temporarily or accidentally. Provided that such
invention is not used for the manufacturing of anything to be sold in the Philippines.
g. Any prior user who, in good faith, used or prepared to use the invention before the
patent’s filing or priority date may continue using it within the patent’s territory.
h. A government agency or third person authorized by the Government may exploit
the invention even without agreement of the patent owner where:
i. public interest requires it
ii. a government agency deems it necessary
iii. a court or agency finds the owner’s use anti-competitive
iv. there’s a national emergency for drugs or medicines
v. there’s unjustified public non-commercial use of the patent.

2. Under what conditions can the government, or third person authorized by the
government, exploit the invention.
- The use by the Government, or third person authorized by the Government shall be
subject, mutatis mutandis, to the conditions
[Link] scope and duration of such use shall be limited to the purpose for which it was
authorized
2. Such use should be non-exclusive
3. The right holder shall be informed promptly whenever any of the foregoing circumstances
occurs.
4. The right holder shall be paid adequate remuneration in the circumstances of each case,
taking into account the economic value of the authorization.

h. Patent Infringement
Infringement – the act of making, using, selling a patented product obtained directly from a
patented process, or the use of a patented process without the authorization of the patentee.
Note: 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.

[Link] may file an action for patent infringement?

- only the patentee or their successor-in-interest can sue for patent infringement.
[Link] has the burden of proof in an action for infringement?
- the plaintiff has the burden of proof. However, presenting a properly issued patent
creates a prima facie presumption of its validity, shifting the burden to the defendant
to disprove it with evidence.

i. Test in patent infringement

Tests in Determining Infringement.

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a. Literal Infringement – The starting point is the exact wording of the patent claims. If the
accused product clearly matches what is described, infringement is established. The court
compares the claims and the accused product side by side, considering the full context of
the claims and specifications, to see if all essential elements are the same.
b. Doctrine of Equivalents – Infringement occurs when a device uses the core concept of
a prior invention, making modifications but still operating in a similar way to achieve the
same result, according to the function-means-and-result test.

Remedies for Infringement

a. Action for Damages/ Civil Action – A patentee or anyone with legal rights to a patented
invention may file a civil case in the proper court of their rights are infringed, to claim
damages, attorney fees, litigation costs, and request an injunction to protect their rights.
b. Criminal Action – Patent infringement is not criminal on the first offense. Criminal
Liability arises only if the infringer repeats the same acts after a court’s final judgment. In
such cases, both civil and criminal actions may be pursued.
c. Destruction – The patent holder may request the court for the destruction or disposal of
seized infringing goods. Destruction means total elimination while disposal means removal
from commerce but allows lawful reuse. The court may order either without compensation,
and such orders are generally immediately enforceable except destruction orders if a motion
for reconsideration is filled.

ii. Prescriptive period – No damages can be claimed for infringement done over 4 years
before filing the case. Damages also aren’t recoverable if the infringer didn’t know or couldn’t
have reasonably known about the patent unless the product or its materials are clearly
marked with Philippine Patent and the patent number.

iii. Licensing

1. What are the kinds of licensing agreements?

a. Voluntary Licensing – A voluntary license is a permission from a patent holder allowing
another to make and sell the patented product, usually with set terms on royalties, quality,
and market. Lasts for the full term of the agreement and must follow IPC rules to promote
fair tech transfer and prevent abuse of IP rights.

Ø Technology Transfer Arrangements – contracts where an IP owner allows another

party to use their IP under agreed terms. This includes licensing of IP rights and know-how,
except software made for the mass market.

Ø Stipulations that are prohibited in technology transfer agreements

i. Agreements that require the licensee to buy the equipment, materials, or technology only
from a specific source, or to permanently hire staff chosen by the licensor.
ii. Agreements where the licensor controls the sale or resale prices of products made under
the license.
iii. Agreements that contain restrictions regarding the volume and structure of production

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b. Compulsory Licensing – When the government allows another person to produce the
patented product or process without the consent of the patent owner or plans to use the
patented invention itself.

Ø Grounds for compulsory licensing of a patent

i. National emergency or other circumstances of extreme urgency
ii. Where the Public Interest, in particular, national security, health, or development of other
vital sectors of the national economy as determined by the appropriate agency of the
Government so requires
iii. 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
iv. In case of public non-commercial use of the patent by the patentee, without satisfactory
reason
v. 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.
[Link] the demand for patented drugs and medicines is not being met to an adequate
extent and on reasonable terms, as determined by the Secretary of the Department of
Health

Ø Period to file a petition for compulsory license? – A compulsory license can only be
requested after four years from the filing date or three years from the patent grant date,
whichever is later.

Compulsory license may be applied for at any time after the grant of the patent in the
following cases:
i. If required for public interest such as national security, health, nutrition, or development of
key economic sectors, as determined by the relevant government agency
ii. If a court or administrative body finds the patent holder or licensee’s use of the patent is
anti-competitive.
iii. In case of public non-commercial use of the patent by the patentee, without satisfactory
reason
iv. May be granted to the owner of a “second patent” if it cannot be used in the country
without infringing an earlier “first patent” to the extent needed to work the second invention.

Ø 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.
i. The scope and duration of such license shall be limited to the purpose for which it was
authorized
ii. The license shall be non-exclusive
[Link] license shall be non-assignable, except with the part of the enterprise or business with
which the invention is being exploited
iv. If a patented invention cannot be used in the country without violating an earlier patent, a
compulsory license may be granted to the owner of the second patent
v. May be terminated if it is shown that the conditions that justifies its granting no longer exist
and are unlikely to return, provided the licensee’s interests are properly protected

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vi. The patentee must receive fair compensation based on the economic value of the license.
However, if the license was granted to address an anti-competitive practice identified
through legal or administrative proceeding, the need to correct that practice may influence
the compensation amount.

Iv. Assignment and transmission of rights

1. How are rights, title or interest in and to patents and inventions assigned?
- assigned or transmitted by inheritance or bequest or may be the subject of a license
contract

2. Formalities prescribed by the IPC for the assignment of rights over a patent
a. The assignment must be in writing, notarized, and certified with the notary’s seal or
by an authorized officer.
b. The IPO must record assignments, licenses, and other documents related to the
transfer of rights, titles, or interest in inventions, patents, or patent applications.
c. Such documents are void against any later buyer or lender who purchases or
mortgages for value and without knowledge, unless recorded with the office within 3
months from the date of the document or before the purchase or mortgage occurs.

THE LAW ON TRADEMARKS, SERVICE MARKS AND TRADE NAMES

Functions:

Section 9.
● 9.1. Search and examination of the applications for the registration of marks,
geographic indications
and other marks of ownership and the issuance of the certificates of registration.
● 9.2. Conduct studies and researches in the field of trademarks in order to assist the
Director General in formulating policies on the administration and examination of
trademarks.

Definition of terms

Section 121

TERM DEFINITION

Mark Visible sign distinguishing goods or services; includes

stamped/marked containers.

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 Collective Mark Sign used by various enterprises under one owner, indicating
common origin or characteristics.

Trade Name Name/designation identifying or distinguishing an enterprise.

Bureau Refers to the Bureau of Trademarks

Director Refers to the Director of Trademarks

Regulations Trademarks rules issued by the Director and approved by the

Director General.

Examiner Trademark examiner.

Section 122: How Marks Are Acquired

● Rights are acquired through valid registration under this law.

Section 123.1 Registrability- A mark cannot be registered if it:

a. Contains immoral, deceptive, or scandalous matter, or disparages or falsely suggests
a connection with persons, institutions, beliefs, or national symbols.
b. Includes the flag, coat of arms, or insignia of the Philippines or any foreign nation, or
any simulation thereof.
c. Uses a name, portrait, or signature of a living person without consent, or of a
deceased Philippine President during the life of their widow without consent.
d. Is identical with or similar to a registered mark or earlier filed mark, especially if:
(i) It pertains to the same goods/services,
(ii) It relates to closely related goods/services,
(iii) It may deceive or cause confusion.
e. Is identical, similar, or a translation of a well-known mark, whether registered or not,
used for identical or similar goods/services, based on public knowledge in the
Philippines.
f. Is similar to a well-known mark, even if registered in the Philippines for different
goods/services, if its use would imply a connection and harm the well-known mark's
owner.
g. Is likely to mislead the public regarding the nature, quality, or origin of the goods/s
h. Is composed exclusively of generic signs for the goods/services.
i. Uses signs or indications that have become customary in trade.
j. Describes the characteristics (kind, quality, quantity, origin, etc.) of the
goods/services.
k. Consists of shapes determined by technical factors or the nature of the goods.
l. Is based on color alone, unless defined by a specific form.
m. Contradicts public order or morality.

123.2
- Signs or devices mentioned in (j), (k), and (l) may still be registered if they have
become distinctive in relation to the goods/services through use in commerce in the
Philippines. The Office may accept evidence of five (5) years of continuous and
exclusive use by the applicant as prima facie proof of distinctiveness.

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123.3
- The nature of the goods to which the mark is applied does not prevent its registration.
(Sec. 4, R.A. No. 166a)

124.1
The application for mark registration must be in Filipino or English and contain the following:
a. A request for registration.
b. The name and address of the applicant.
c. The name of the State where the applicant is a national or domiciled, and the State
where they have an industrial or commercial establishment (if any).
d. If a juridical entity, the law under which it is organized.
e. Appointment of an agent/representative if the applicant is not domiciled in the
Philippines.
f. If claiming priority from an earlier application, provide:
i) The State where the earlier application was filed,
ii) The date of the earlier application,
iii) The application number (if available).
g. If claiming color as a distinctive feature, state the colors and the parts of the mark in
each color.
h. If the mark is three-dimensional, a statement to that effect.
i. One or more reproductions of the mark as prescribed.
j. A transliteration or translation of the mark or parts of it.
k. The names of the goods or services and their corresponding classes under the Nice
Classification.
l. A signature or self-identification by the applicant or representative.

124.2
- The applicant or registrant must file a declaration of actual use of the mark, with
evidence, within three (3) years from the application filing date. Failure to do so will
result in refusal of the application or removal of the mark from the Register.

124.3
- One application may cover multiple goods/services, whether they belong to one class
or several classes under the Nice Classification.

124.4
- If the Office finds doubts about the veracity of any information in the application, it
may require the applicant to submit sufficient evidence to clarify the doubt. (Sec. 5,
R.A. No. 166a)

SEC. 125. Representation; Address for Service.

- A foreign applicant for trademark registration shall be represented by a resident
agent or representative in the Philippines upon whom notices or processes may be
[Link] no such representative is appointed, service may be made on the Director
of the Intellectual Property Office.

SEC. 126. Disclaimers.

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 - The Office may require the applicant to disclaim an unregistrable component of the
mark.A disclaimer shall not prejudice the applicant’s rights in the disclaimed matter
when it becomes distinctive.

SEC. 127. Requirements of Application.

The filing date of an application shall be the date when the Office receives:
(a) An express or implicit indication that registration is sought;
(b) Information identifying the applicant;
(c) Information allowing the Office to contact the applicant;
(d) A reproduction of the mark; and
(e) A list of goods or services.
*The prescribed fees must be paid accordingly.

SEC. 128. Single Registration for Goods and/or Services in Multiple Classes.
- A single application for registration may include multiple classes of goods or services
under the Nice Classification.

SEC. 129. Division of Application.

- The applicant may divide an application covering multiple goods or services into two
or more applications, maintaining the original filing date.

SEC. 130. Signing and Filing of Application.

- Signatures may be handwritten, rinted, stamped, typewritten, or electronically made.
- Communications may be made via facsimile or electronic means, subject to
submission of the original within thirty (30) days.
- Notarization is not required except for surrender of a registration.

SEC. 131. Priority Right.

- An applicant may claim priority based on an earlier application filed in another
country party to the Paris Convention or WTO Agreements, provided the Philippine
application is filed within six (6) months.
- Registration shall not be granted until registration in the country of origin is obtained.

*Well-known marks under the Paris Convention or TRIPS Agreement are protected
irrespective of registration.

SEC. 132. Application Number and Filing Date.

- An application complying with the requirements shall be assigned an application
number and filing [Link] will be notified of deficiencies, and no filing date
shall be assigned until corrected.

SEC. 133. Examination and Publication.

(a) The Office shall examine the application for registrability.
(b) If registrable, the application shall be published after payment of the fee.
(c) If refused, the applicant has four (4) months to respond or amend the application.

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(d) Applications deemed abandoned may be revived within three (3) months upon showing
good cause.

SEC. 134. Opposition.

- Any person may oppose the registration by filing a verified notice of opposition within
thirty (30) days from publication, stating the grounds, supporting facts, and
[Link] may be granted upon good cause and payment of fees.

SEC. 135. Notice and Hearing.

- The Office shall notify the applicant and oppositor and set a date for hearing.

SEC. 136. Issuance and Publication of Certificate.

- If there is no opposition or the opposition is dismissed, the Office shall issue the
certificate of registration after payment of fees and publish the notice of issuance.

SEC. 137. Registration of Mark and Issuance of Certificate.

The Office shall maintain a register of marks, and the certificate shall state:
(a) Name and address of registrant;
(b) Filing date and registration date;
(c) Goods or services; and
(d) Other matters as [Link] of ownership or address must be recorded.

SEC. 138. Certificates of Registration as Prima Facie Evidence.

The certificate of registration constitutes prima facie evidence of:

(a) Validity of registration;
(b) Ownership of the mark; and
(c) Exclusive right to use the mark in relation to the goods or services.

SEC. 139. Publication of Registered Marks; Inspection of Register.

- Registered marks shall be published.
- The register is open to public inspection and copies may be obtained upon payment
of prescribed fees.

SEC. 140. Cancellation or Amendment of Registration; Correction of Mistakes.

- The registrant may request cancellation or amendment, provided the changes do not
materially alter the registered mark.

SEC. 141. Sealed and Certified Copies as Evidence.

- Sealed and certified copies issued by the Director shall be admissible as evidence.

SEC. 142. Correction of Mistake Made by the Office.

- Mistakes made by the Office shall be corrected without charge.

SEC. 143. Correction of Mistake Made by the Applicant.

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 - Mistakes made in good faith by the applicant may be corrected upon payment of
prescribed fees, provided it does not materially alter the mark.

SEC. 144. Classification of Goods and Services.

- Goods and services shall be classified according to the Nice
[Link] does not automatically determine relatedness of goods or
services.

SEC. 145. Duration.

- The registration of a mark is valid for ten (10) years.
- A Declaration of Actual Use must be filed within one (1) year following the fifth (5th)
anniversary of registration; otherwise, the registration shall be removed.

SEC. 146. Renewal.

- The registration may be renewed for periods of ten (10) years.
- The renewal must be filed within six (6) months before expiration or within six (6)
months after expiration, subject to payment of additional fees.
- The renewal request must include the registrant’s name, address, registration
number, and list of goods or services.

Rights over a trademark conferred

- The rights in a mark shall be acquired through registration with the IPO (ipc section
122) the filing date of application is the operative act to acquire trademark rights
- Prior use is no longer a condition precedent for registration of trademark, service
mark or trade name

Acquisition of ownership of mark

- The rights in a mark shall be acquired through registration but the right to register a
trademark should be based on ownership
- An exclusive distributor does not acquire any proprietary interest in the principal’s
trademark and cannot register it in his own name unless it has been validly assigned
to him.

Registration
- Prior use is not a requirement but there must be actual use after application
- Declaration of actual use - within 3 years from filing of the application

Duration or effectivity of trademark registration

- 10 years, subject to indefinite renewals of 10 years each
- The registrant is required to file a declaration of actual use and evidence to that
effect, or show valid reasons based on the existence of the obstacles to such use,
within 1 year from the 5th anniversary of the date of registration of the mark.
Otherwise, the mark shall be removed from the register by the IPO (ipc section 145
and 146)

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Well known marks=non-registrable marks
- Identical with an internationally well-known mark, whether or not it is registered here,
used for identical or similar goods or services
- Identical with an internationally well-known mark which is registered in the Philippines
with respect to non-similar goods or services. Provided that the interests of the owner
of the registered mark are likely to be damaged by such use

Rights of a trademark owner

- Right to exclusive use of the mark in connection with one’s own goods or services
resulting in likelihood of confusion
- Right to prevent others from use of an identical mark for the same, similar or related
goods or services (section 147)
- Territoriality principle: trademark registration abroad shall not be valid and binding
here in the philippines
- Exception: well known marks, bad faith

Trademark infringement
- Use without consent of the trademark owner of any reproduction, counterfeit, copy
orcolorable limitation of any registered mark or trade name. Such use is likely to
cause confusion or mistake or to deceive purchasers or other as to the source or
origin of such goods or services, or identity of such business.

ELEMENTS: trademark infringement

- Ownership of a trademark through registration
- That the trademark is reproduced, counterfeited, copied, or colourably imitated by
another
- No consent by the trademark owner or assignee
- Use in connection with the sale, offering for sale, or advertising of any such
goods,business or services or those related thereto
- Likelihood of confusion

Colorable imitation
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

Likelihood confusion

Types of confusion
Confusion of goods- as to the goods themselves
Confusion of business - as to the sources or origin of such goods
a. Wherein the goods of the parties are different but the defendant’s product can
reasonably be assumed to originate from the plaintiff thereby deceiving the public
into believing that there is some connection between the plaintiff and defendant,
which in fact, does not exist

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Test of confusion
Dominancy test
- Focuses on the prevalent features of the competing marks
Totality test
- Determined on the basis of visual, aural, connotative comparisons and overall
impressions engendered by the marks in controversy as they are encountered in the
marketplace
Other factors
- Idem sonans rule aural effects of the words and letters contained in the marks are
also considered in determining the issue of confusing similarity

Doctrine of secondary meaning

- The effect that a word or phrase originally incapable if exclusive appropriation with
reference to an article on the market
- Geographically or otherwise descriptive
- Have been used so long and so exclusively by one producer with reference to his
articlethat, in that trade and to that branch of the purchasing public
- The word or phrase has come to mean that the article was his product

Unfair competition
- Passing off (or palming off) or attempting to pass upon the public of the goods or
business of one person as the goods or business of another with the end and
probable effect of deceiving the public

TRADEMARK INFRINGEMENT UNFAIR COMPETITION

Unauthorized use of a trademark Passing off one's goods as those of another

Fraudulent intent is unnecessary Fraudulent intent is essential

GR: prior registration of the trademark is a Registration is not necessary

pre requisite to the action
XPN: well known marks

Remedies and jurisdiction

- Administrative action - IPO-BLA, concurrent with RTC-SSCs
- Civil action, RTC-SSC concurrent with IPO-BLA
- Criminal action, exclusive with RTC-SSC
a) 2-5 years imprisonment
b) 50,000 - 200,000 in fine

COPYRIGHT
- It is an intangible, incorporeal right granted by statute to the author or originator of
certain literary or artistic productions, whereby he or she is invested, for a specific
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 period, with the sole and exclusive privilege of multiplying copies of the same and
publishing and selling them.
- Copyright is likewise not confined to literary and artistic work but also extend to
scientific and scholarly works similar to those works enumerated in Section 172.1 of
the IPC.

CHARACTERISTIC OF A COPYRIGHT
a. It is granted to the creator or originator of the copyrightable work. But being a right,
copyright can be assigned
b. The object is original intellectual creation in the literary, artistic and scientific domains
c. It is not indefinite. The economic and moral rights are exclusive to the creator or
originator of the work during the term specified by law, except for the moral right of
attribution which is in perpetuity.
d. Being a statutory grant, the rights derived from such grant may only be obtained and
enjoyed with respect to the works and on the terms and conditions, specified in the
statute. The “works” must fall within the statutory enumeration or description.

ORIGINAL & LITERARY WORKS

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 works and works produced by a process
analogous to cinematography or any process for making audio-visual recordings;
m. Pictorial illustrations and advertisements;
n. Computer programs; and
o. Other literary, scholarly, scientific, and artistic works.

DERIVATIVE WORKS

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 a. Dramatizations, translations, adaptations, abridgments, arrangements, and other
alterations of literary or artistic works; and
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.

PUBLISHED EDITION OF WORK - 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
ofthe published edition of the work.

WORKS NOT PROTECTED

a. Idea, procedure, system, method or operation, concept, principle, discovery or mere
data as such, even if they a reexpressed, explained, illustrated or embodied in a
work;
b. News of the day and other miscellaneous facts having the character of mere items of
press information;
c. Any official text of a legislative, administrative or legal nature, as well as any official
translation thereof;
d. 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;
e. 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.

CLASSIFICATION OF RIGHTS DERIVED FROM A COPYRIGHT

[Link] RIGHT - shall consist of the exclusive right to carry out, authorize or prevent
the following acts:

A. Reproduction of the work or substantial portion of the work;

B. Dramatization, translation, adaptation, abridgmen t,arrangement or other
transformation of the work;
C. The first public distribution of the original and each copy of the work by sale or other
forms of transfer of ownership;
D. Rental of the original or a copy of an
(i) audiovisual, or
(ii)cinematographic work,
(iii) a work embodied in a sound recording,
(iv) a computer program,
(v) a compilation of data and other materials, or
(vi) a musical work in graphic form, irrespective of the ownership of the original or the
copy which is the subject of the rental;
E. Public display of the original or a copy of the work;
F. Public performance of the work; and
G. Other communication to the public ofthe work.

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[Link] RIGHT - author of a work shall, independently of the economic
rights or the grant of an assignment or license with respect to such
right, have the following moral rights:

A. 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;(“Right of attribution”)
B. To make any alterations of his work prior to, or to withhold it from publication;
C. 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;
(“Right of integrity”) and
D. 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. (“Right against false attribution”)

*All moral rights shall be coterminous with the economic right of the author or creator of the
work except the right of attribution which is in perpetuity.

OWNERSHIP OF COPYRIGHT

ORIGINAL & LITERARY WORKS

- Copyright shall belong to the author of the work

JOINT AUTHORSHIP
- 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 a work consists of parts that can be used separately: the author of each part shall
be the original owner of the copyright in the part that he has created

COURSE OF EMPLOYMENT
- The employee, if the creation of the object of copyright is not a part of his regular
duties
- The employer, if the work is the result of the performance of his regularly-assigned
duties

COMMISSIONED WORK
- The person who so commissioned the work shall have ownership of the work.
- The copyright thereto shall remain with the creator, unless there is a written
stipulation to the contrary

AUDOVISUAL WORK
- The copyright shall belong to:
● The producer
● The author of the scenario
● The composer of the music
● The film director

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LETTERS
- Copyright shall belong to the writer subject to the provisions of Article 723 of the civil
code
ANONYMOUS AND PSEUDONYMOUS WORKS
- 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—
1. the contrary appears, or
2. the pseudonyms or adopted name leaves no doubt as to the author’s identity, or
3. if the author of the anonymous works discloses his identity

TRANSFER OR ASSIGNMENT OF COPYRIGHT

Rights of Assignee
● Copyright can be assigned or transferred in whole or in part.
● Transfer may be inter vivos (while alive) or mortis causa (by inheritance).
● The assignee/owner acquires only the rights transferred to them.
● Assignment must be in writing to be valid.
Copyright and Material Object
● Owning a physical copy of a work (like a painting, book, or CD) does not mean
you own the copyright.
● Copyright is separate from the material object.
● Buying a book owning the rights to copy or reproduce it.
Filing of Assignment or License
● Assignments and licenses may be registered with the National Library and the
Intellectual Property Office (IPO).
● Registration is not mandatory, but it serves as evidence of the transaction.
● Useful for proving rights in case of disputes.
Designation of Society
● Copyright owners (or their heirs/assignees) can authorize a collective
management organization (CMO) to manage their rights.
● The Director of the IPO may designate only one CMO per class of work (e.g.,
music, literary, visual arts).
● CMOs are authorized to collect and distribute royalties, and enforce rights for
creators

LIMITATIONS OF COPYRIGHT

- Private, free-of-charge performance/recitation of a work, or use by

charitable/religious institutions.
- Quotation from published works, compatible with fair use, with proper credit to the
author/source.
- Reproduction/communication by mass media of public lectures, addresses, or similar
works on current issues, if not expressly reserved and source is acknowledged.
- Use of works in reporting current events (e.g. photos/videos in news), only to the
extent necessary.
- Inclusion of works for illustration in teaching, compatible with fair use, with
source/author credited.

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 - Temporary recordings of broadcasts by educational institutions, to be deleted within
a reasonable time; not applicable to feature films (except brief excerpts).

- Ephemeral recordings made by broadcasting organizations for their own broadcasts.

- Use by government, National Library, or educational/scientific/professional
institutions if in public interest and fair use.
- Public performance/communication in nonprofit clubs/institutions for charitable or
educational purposes, with no admission fee.
- Public display of original or legally acquired copy of a work (not via screen or
projection), if the work was published or transferred by the author.
- Use of a work in judicial proceedings or by legal professionals for giving advice.

- Exceptions should be interpreted to allow fair use without:

○ Conflicting with normal exploitation of the work.
○ Unreasonably harming the copyright owner’s interests.

COPYRIGHT INFRINGEMENT
A person infringes a right protected under RA 10372 when one:
(a) Directly commits an infringement
(b) Benefits of the infringing activity of another person who commits an infringement if the
person benefiting has been giving notice of the infringing activity and has the right and ability
to control the activities of the other person
(c) With knowledge of infringing activity induces, cause or materially contributes to the
infringing conduct of another

Piracy - Any unauthorized copying of copyrighted materials for commercial purposes, and
the unauthorized commercial dealing in copied materials
Subconscious Copying Doctrine - It contemplates infringement or plagiarism by copying from
another work but committed subconsciously from memory rather than conscious use by
deliberately copying. The overall appearance or impression establishes infringement. Trivial
or minor changes do not necessarily negate infringement.
Plagiarism - It is the act of appropriating the literary composition of another, or parts, or
passages of his writings, or the ideas or language of the same and passing them off as the
production of one’s mind. The incorporation in one’s work of that of another without proper
acknowledgement thereof

KINDS OF INFRINGEMENT
A. Direct Infringement – it is an infringement by a person who without the consent of the
owner of the copyright, does anything the sole right to do which is by law conferred on the
owner of the copyright such as unauthorized translations, infringement by reproduction, or
unauthorized public performance of work
B. Indirect Infringement – dealings with works of direct infringement

DEFENSES AGAINST CHARGE OF INFRINGEMENT

1. The work is not copyrightable;
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[Link] term of the copyright has expired;
[Link] use of the work falls within the limitations on copyright;
[Link] plaintiff/complainant is not the owner of the copyright;
Non-participation in the commission of the infringing activities;
[Link] the basis of the complaint is the benefit derived from the infringing activity, lack of notice
thereof and/or didnot have the ability to control the infringement;
[Link]; and
[Link] of evidence to support the allegations of the
complaint.

De Minimis Principle
- Refers to minimal things, small and trivial. Certain acts would be considered too
minimal to be considered acts of infringement

REMEDIES FOR COPYRIGHT INFRINGEMENT

[Link] - The court may 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
2. Damages - 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. 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.
3. Criminal Penalties 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:

FREQUENCY PENALTY

1st Offense 1-3 years 50,000 to 150,000

2nd Offense 3 yrs and 1 day - 6 years 150,000 to 500,000

3rd Offense 6 years and 1 day - 9 years 500,000 to 1,500,000

*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

Persons Liable

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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

4. Seizure and Impounding - 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
5. Destruction without any compensation - 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.

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