Intellectual Property Law IP.

It must be balanced
accordingly to prevent possible IP
Notes violations.
Basically, IPL is a system that
3. Non-rivalrous
seeks to protect the creation and
- It can be utilized by everyone and
invention of rights holders. not by just one person. Eg. Music,
Intellectual property (An Incorporeal it can be destroyed yet it can be
recorded and played at the same
Right)
time.
- Incorporeal rights are rights to
property that can't be seen or 4. Principle of Territoriality –
touched but are still enforceable meaning its protection is
by law. Generally, incorporeal territorial. For eg. You can only be
rights have to do with intangible protected in the country where
property such as copyrights, your trademark or patent is
licenses, rights-of-way, and
registered. You cannot ask for
easements.
protection in other countries
- It warrants the application of
where you are not registered
legal remedies in cases of
unless you’ll apply for registration
infringement thereof.
in that place.
Importance of Intellectual property
Nestle Case – theory of normal
rights
expansion
1. It serves as the foundation of our
- To protect the company from
artists, creators, authors and the
future manufacturing of the same
likes to come up with their
products.
intellectual creations and commit
- Nestle is a manufacturer ever
them for the development of their
since so the theory of normal
respective enterprises.
2. Encourage creativity and expansion may be applied.
innovation. And these creations In order for the trademark to be
must be protected. protected, you need to register such
“If an individual exerted effort to think, trademark and obtain a Certificate of
and execute what he has visualized, it is Registration to secure an exclusive right
only natural for him to be afforded to use of such mark.
ownership over it.” In the absence of registration
Since intellectual property is a creation - The trademark may be claimed by
of the mind, it may deemed as a property, other registrants.
an intangible one. - Anybody can use the mark

As a property, it can be owned, and the The law provided that only the private
owner has the right to enjoy it and trademark owner/holder can file a
dispose of it. So it can be sold, assigned, complaint against the violator. =
appropriated and etc. PRIVATE RIGHTS

The material object is separate from the

incorporeal right.

Intellectual Property can be:

1. A right
2. A Policy Tool
- A country can set a limit on the 2 Test in Determining Similarity of
protection and enforcement of the Marks
 1) Dominancy Test – the similarity of - It does not apply to those goods
the dominant and prevalent which are unrelated.
features of the competing
- Under prevailing jurisprudence,
trademarks are taken into
even if a certain trademark is
consideration. Infringement takes
already registered, it is not a
place when a certain trademark
bar for anyone who wishes to
contains the essential feature of
use the same trademark as long
another trademark that may cause
as its use is for an unrelated
confusion or mistake in the mind
products or articles of a
of the public or deceive
different kind.
purchasers. The most dominant
feature is the one that catches Eg. Sharpie (Highlighters and Markers)
the buyer’s eyes first. can also be used as a tradename for
cutting products like knives, scissors,
saws and etc.
2) Holistic Test - already
abandoned by the Supreme
Court. it focuses on the similarity How can you tell if the goods are
of the entire features of the related? Factors in determining
competing trademarks such as whether goods are related
labels, packaging and other
1. If they belong to the same class
features.
2. if they have the same descriptive
properties (same physical
attributes and essential features)
3. if they serve the same purpose
LIKELIHOOD OF CONFUSION (same nature)

1. Confusion of Goods 4. If they have the same style of

- Ordinarily prudent purchaser distribution and marketing of the
would be induced to purchase one goods, including how the goods are
product in the belief that he was displayed and sold
purchasing the other.
2. Confusion of Origin or Business
- The competing products are 2. Principle of Territoriality
different but the defendant’s
product might be assumed to - Means that intellectual property is
originate with plaintiff and the only protected in the country
purchaser would come into the where the right holder has sought
belief that the competing protection and is registered.
products are of the same
manufacturer or connected with
each other. - For example, as a general rule, a
trademark registered in the
Philippines is only protected in the
RELEVANT PRINCIPLES IN IPL Philippines. Thus, a mark not
registered in the Philippines, will
1. Principle of Specificity
not be protected under the
- This means that the protection country’s legal mantle.
granted by the trademark
registration extends only to
specified goods and closely related - Thus, if you want to afford
goods. protection for your trademark in
 Korea or other countries then you - As anchored from intellectual
have to apply and register the property law, it simply conveys
same in the said countries. that trademark shall be capable of
distinguishing the goods. It must
be distinctive from others. The
- there is an exception of this purpose of which is to deliver
wherein registration is not consumers from being confused in
necessary for a foreign country making a purchase.
to be afforded protection. and
Degree of Distinctiveness
this is the case of Well-known
marks. 1. Fanciful Mark
- Marks or words invented or made
up by the right holder which can
- XPN: of these are the be described as meaningless but
internationally known marks (well- unique and has the highest degree
known marks) which have a certain of distinctiveness. (Kodak, Xerox,
degree of protection conferred Pepsi)
to it.
2. Arbitrary Mark
- The marks or words used are
Well-known Marks - or Internationally- common but communicates an
known marks, are marks that are arbitrary or different meaning.
protected for identical goods and (Apple for cellphones, Camel for
services even if the same is not electronic appliances)
registered in the country where it seeks
protection 3. Suggestive Mark
- The exception is anchored from a - The marks or words used are

Treaty (Paris Convention) which indicative of the characteristic,

conveys the maximum protection quality or usage of the product.

of the well-known marks against (Puma for shoes, the mark

identical goods in the country indicates that the shoes are good

where it hasn't been registered for running)

yet.
4. Descriptive Mark
- Marks that describe the product
- It refers to a mark which has itself, whether its usage or the
become so well-known to the public process it was produced. (Fragrant
through its extensive and for perfume)
continuous use.
5. Generic Mark
3) Principle of Reciprocity - Under the law, generic marks
- Filipino entities who receive cannot be registered.
intellectual property protection - The generic mark must be in a
from a country which is a member foreign language or writing that is
of a treaty, wherein the not known by the place where the
Philippines is also a signatory, the product is being sold or marketed.
Philippines is bound to extend the
same treatment to the nationals of
the said country.

4) Principle of Distinctiveness
 ng mas matagal pa kaysa sa
kalaban. ahahahahahaha

Trademark Infringement

- is defined by law as the use

without the consent of the
trademark owner of any
reproduction, counterfeit, copy or
colorable imitation of any
registered mark or tradename
which would likely cause confusion
or mistake or deceive purchasers
or others as to the source or
origin of such goods.

Trademark Infringement vs. Unfair

Competition

(1) Infringement of trademark is the

unauthorized use of a trademark,
whereas unfair competition is the passing
off of one's goods as those of another
that has established goodwill.

(2) In infringement of trademark

fraudulent intent is unnecessary whereas
in unfair competition fraudulent intent is
essential.

(3) In infringement of trademark the

prior registration of the trademark is a
prerequisite to the action, whereas in
unfair competition registration is not
necessary.

Unfair Competition

- It is the passing off of one’s goods

as those of another or the giving
of one’s goods the general
appearance of another who has
established goodwill.

Doctrine of Secondary Meaning

- basically, basta yung word is used

by and closely associated with a
company/business for a long
period of time, then thats the only
time it may acquire secondary
meaning. the applicant of the
same name must prove otherwise
na ginagamit nila yung word na yun