PIMENTEL, ERIKKA V.

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COPYRIGHT TRADEMARK PATENT
CONCEPT It is the legal protection extended to It is any visible sign capable of Any technical solution of a problem
the owner of the rights in an “original distinguishing the goods (trademark) in any field of human activity which
work”, which refers to every literary, or services (service mark) of an is new, involves an inventive step
scientific and artistic production. enterprise from that of another and and is industrially applicable shall be
shall include a stamped or marked patentable.
It is a right over literary and artistic container of goods. In relation
works which are original intellectual thereto, a trade name means the Requisites:
creations in the literary and artistic name or designation identifying or
domain protected from the moment distinguishing an enterprise. 1. A technical solution of a
of creation. problem in any field of human
Requirements: activity;
2. It must be novel invention;
3. Industrially applicable
1. There must be a visible sign 2.
It must be capable of
distinguishing the goods of an
enterprise

Trade Name
The name or designation identifying
or distinguishing an enterprise [Sec.
121.3, RA 8293].
Any individual name or surname,
firm name, device or word used by
manufacturers, industrialists,
merchants, and others to identify
their businesses, vocations or
occupations. [Converse Rubber
Corp. v. Universal Rubber Products,
 Inc., G.R. No. L 27906 (1987)]

COVERAGE ORIGINAL WORKS. Literary and Fanciful or “Coined” Marks PATENTABLE INVENTIONS

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artistic works, hereinafter referred to These are invented or “coined” 1. Inventions;
as "works", are original intellectual words that do not have any 2. Utility Model;
creations in the literary and artistic meaning and are made solely for 3. Industrial Designs;
domain protected from the moment the purpose of the mark. They are 4. Lay-Out Designs
of their creation and shall include in considered “strong” marks for (Topographies of
particular: purposes of registration and Integrated Circuits)
protection for being inherently
1. Books, pamphlets, articles and distinctive.
other writings; Example: “KODAK” for camera.
2. Periodicals and newspapers;
3. Lectures, sermons, addresses, Arbitrary Marks
dissertations prepared for oral Common words used as marks, but
delivery, whether or not reduced are unrelated to the good or service
in writing or other material form; they represent. They neither
4. Letters; describe nor suggest the
5. Dramatic or dramatico-musical characteristic of the goods or
compositions; choreographic service, though they are
works or entertainment in considered highly distinctive for
dumb shows; purposes of registration.
6. Musical compositions, with or Example: “APPLE” for
without words; electronic product.
7. Works of drawing, painting,
architecture, sculpture, Suggestive Marks
engraving, lithography or Marks that hint or suggest the
other works of art; models or nature or quality of the good or
designs for works of art; service without directly describing
8. Original ornamental designs or it. They are “subtly descriptive” and
models for articles of are entitled to protection despite
manufacture, whether or not lack of
registrable as an industrial distinctiveness.
design, and other works of Example: “JAGUAR” for automobile.

Tests to Determine
Confusing Similarity
 between Marks

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 applied art; Dominancy Test
9. Illustrations, maps, plans,
sketches, charts and three The dominancy test considers the
dimensional works relative to dominant features in the competing
geography, topography, marks in determining whether they
architecture or science; are confusingly similar.
[Link] or plastic works of a
scientific or technical character; Under the dominancy test:
[Link] works including
• Greater weight is given to the
works produced by a process
similarity of the appearance of
analogous to photography;
lantern slides; the product arising from the
adoption of the dominant
[Link] works and
features of the registered
cinematographic works and
mark.;
works produced by a process
• Minor differences between the
analogous to cinematography
or any process for making registered mark and the
audio mark
in question are disregarded;
visual recordings;
• The aural and visual
[Link] illustrations and
impressions created by the
advertisements;
marks in the public mind are
[Link] programs; and
considered.
[Link] literary, scholarly,
• Little weight is given to factors
scientific and artistic works
like prices, quality, sales
outlets and market
Derivative Works
The following derivative works shall segments.
also be protected by copyright: [McDonald’s Corporation v.
Dramatizations, translations, L.C. Big Mak Burger, Inc., et
adaptations, abridgments, al., G.R. No. 143993 (2004)]
arrangements, and other alterations The dominancy test is now
of literary or artistic works; and embodied in Sec. 155 of the
Collections of literary, scholarly or IPC and is therefore the
PIMENTEL, ERIKKA V.
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Tabular presentation of the distinctions between Trademark, Copyright and Patent
artistic works, and compilations of controlling test. [Ibid.]
data and other materials which are
original by reason of the selection or Holistic Test. The holistic test, to
coordination or arrangement of their determine whether a trademark has
contents. been infringed, considers the mark
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.
The court therefore should be
guided by its first
impression.

• The buyer acts quickly and is

governed by a casual glance.; •
The value of such casual
glance may be dissipated,
as soon as the court
assumed to
analyze carefully the
respective features of the
mark. [Del
Monte Corporation, et al. v.
CA, G.R. No. L-78325
(1990)]
 NOT COVERED Unprotected Subject Matter a. Immoral, deceptive or Non-patentable inventions [Sec.
(1) Any idea, procedure, scandalous matter or matter 22] 1. Discoveries, scientific
system method or operation, which may disparage or theories and mathematical
concept, falsely suggest a connection methods, and in the case of drugs
principle, discovery or mere data as with persons, living or dead, and medicines:
such, even if they are expressed, institutions, beliefs or national a. The mere discovery of a new form
explained, illustrated or embodied in symbols, or bring them into or new property of a known
a work; contempt or disrepute; substance which does not result in
(2) News of the day and other enhancement of the known efficacy
miscellaneous facts having the of that
substance;

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Tabular presentation of the distinctions between Trademark, Copyright and Patent
character of mere items of b. Consists of flag or coat of arms b. The mere discovery of any
press information; or other insignia of the new property or new use for a
(3) Any official text of a legislative, Philippines or any of its known substance; or
administrative or legal nature, as political subdivisions, or of c. The mere use of a known
well as any official translation any foreign nation or any process unless such known
thereof; (4) Pleadings; (5) Original simulation thereof; process results in a new product
decisions of courts and tribunals c. Consists of a name, portrait or that employs at least one new
(Note: This pertains to the signature identifying a reactant. [RA 8293 as amended by
“original decisions” not the particular living individual RA 9502, The Cheaper Medicine
SCRA published volumes since except by his written consent, Act of 2008]
these are protected under or the name, signature, or 2. Schemes, rules and methods
derivative works under Sec. portrait of a deceased of performing mental acts,
173.1). [Sec. 175, RA 8293] President of the Philippines, playing games or doing
during his life of his widow, if business, and programs for
Works of the Government of any, except by written computers
the Philippines consent of the widow; 3. Methods for treatment of the
A work created by an officer d. Identical with a registered mark human and animal body by surgery
or employee of the belonging to another r a mark or therapy and diagnostic methods
Philippine with an earlier filing or priority practiced on the human and animal
Government or any of its date, in respect of: body.
subdivisions and instrumentalities, • The same goods or Exceptions: products and
including government-owned or services, or composition for use in any of
controlled corporations as a part of • Closely related goods or these methods
his regularly prescribed official services, or 4. Plant varieties or animal breeds
duties. [Sec. 171.11, RA 8293] • If it nearly resembles or essentially biological process
General Rule: No copyright such a mark as to be for the production of plants or
shall subsist in any work of the animals Exceptions:
likely to deceive or
Government. micro-organisms; non biological
cause confusion; [Sec.
and microbiological
Exceptions 123.1(d), RA 8293]
processes
e. Is identical with, or
5. Aesthetic creations 6.
1. When copyright is confusingly similar to, or
constitutes a Anything contrary to public
transferred by assignment or order or morality
bequest in translation of a well-known
mark, whether or not registered
 favor of the government [Sec.

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 176.3]; in the Philippines, and used
for identical or similar goods
or
Works of the Public Domain services; [Sec. 123.1(e), RA
Works of the public domain are 8293]
non copyrightable. f. Is identical with, or confusingly
similar to, or constitutes a
To this class of works belong: translation of a well-known
1. Works, whose term of copyright mark which is registered in
has expired; the Philippines, and used for
2. Works wherein the copyright over goods or services which are
them are waived by the owner in not
favor of the public; and similar; [Sec. 123.1(f), RA
3. Works which did not enjoy 8293]
copyright protection in the first g. Likely to mislead the
place, as in the case of unregistered public, particularly as to
works made under previous laws the nature,
that required the registration of quality, characteristics or
copyright [See: Santos vs. geographical origin of the
McCullough Printing Company, G.R. goods or services; [Sec.
No. L-19439 (1964)] 123.1(g), RA 8293] Consists
exclusively of signs that are
Useful Articles generic for the goods or
A “useful article” is defined as an services that they seek to
article “having intrinsic utilitarian identify; [Sec. 123.1(h), RA
function that is not merely to portray 8293]
the appearance of the article or to h. Consists exclusively of signs
convey information” is excluded from or of indications that have
copyright eligibility. The only become customary or usual
instance when a useful article may to
be the subject of copyright designate the goods or
protection is when it incorporates a services in everyday
design element that is physically or language or in a bona fide
conceptually separable and
 established trade practice;
[Sec. 123.1(i), RA 8293]
i. Consists exclusively of signs or

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from the underlying product. [Olaño of indications that may serve
v. Lim Eng Co, G.R. No. 195835 in trade to designate the
(2016)] 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; [Sec. 123.1(j),
RA
8293]
j. 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; [Sec. 123.1(k), RA
8293]
k. Consists of color alone,
unless defined by a given
form; [Sec.
123.1(l), RA 8293]
l. Is contrary to public order or
morality. [Sec. 123.1(m),
 RA
8293]

HOW ACQUIRED Works are Protected by the Acquisition of ownership of mark Right to a Patent
Sole Fact of Their Creation General Rule: The right to a
General Rule: To acquire rights in patent belongs to the inventor, his
Principle of automatic a mark, heirs, or assigns. When two or
protection Copyright is vested registration is required. [Sec. 122, more persons have jointly made
from the very moment of creation RA 8293] an invention, the
irrespective of their mode or form Exception: Well-known marks right to a patent shall belong to
of expression, as well as of their are protected even without them jointly. [Sec. 28, RA 8293]
content, quality and registration.

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purpose. [Sec. 171.1-172.2, RA 8293] Note: However, when the Exceptions: Inventions
well-known mark is not registered, created pursuant to
The enjoyment and exercise of its protection is limited, as it only employment or a
copyright, including moral rights, prevents the commissioned work
shall not be the subject of any registration of confusingly similar The person who commissions
formality; such enjoyment and such marks that are used for identical the work shall own the patent.
exercise shall be independent of or similar goods or services. [Sec. 30.1, RA 8293]
the existence of protection in the [Sec. 123.1(e), RA 8293] The employer has the right to the
country of origin of the work. While the IP Code expressly patent if the invention is the result of
[Article 5(2), Berne provides that the rights to a mark the performance of the employee’s
Convention for the Protection shall be acquired through regularly assigned duties. [Sec.
of Literary and Artistic Works] registration, the Supreme Court 30.2, RA 8293]
held that
notwithstanding this express First-to-file rule
provision in the IP Code, prior use is RA 8293 changed the basis of
still the basis of trademark ownership of a patent from First-to
ownership. [Berris Agricultural Co., Invent under RA 165 to First-to-File.
Inc. vs. Norvy Abyadang, G.R. No. If two or more persons have made
183404, (2010)] Registration is not a the invention separately and
mode of acquiring ownership, rather, independently of each other, the
it merely gives rise to a prima facie right to the patent shall belong to
presumption of ownership of the the person who filed an application
registrant over the mark [Sec. 138, for such invention, or where two or
RA 8293] more applications are filed for the
Said presumption of ownership same invention, to the applicant
may be rebutted by the true owner who has the earliest filing date or,
of the mark in an opposition or the earliest priority date. [Sec. 29,
cancellation proceeding. RA 8293]

Filing Date
Filing Date The filing date of a patent
The filing date of an application application shall be the date of
shall be the date on which the receipt by the Office of at least the
Office received the following following
 indications and

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Tabular presentation of the distinctions between Trademark, Copyright and Patent
elements in English or Filipino: elements:

a. An express or implicit a. An express or implicit

indication that the registration indication that a Philippine
of a mark is sought; patent is
b. The identity of the applicant; sought;
c. Indications sufficient to b. Information identifying the
contact the applicant or his applicant; and
representative, if any; c. Description of the invention
d. A reproduction of the mark and one (1) or more claims in
whose registration is Filipino or English. [Sec. 40.1,
sought; RA 8293]
and
e. The list of the goods or Invention created pursuant to
services for which the a commission/in the course
registration is sought. [Sec. of employment
127.1, RA 8293] The person who commissions
the work shall own the patent,
Priority Right
unless otherwise provided in the
An application for registration of a
contract. [Sec. 30.1, RA 8293]
mark filed in the Philippines by a
In case the employee made
person referred to in Section 3,
the invention in the course of
and who previously duly filed an
his
application for registration of the
employment contract, the patent
same mark in one of those
shall belong to:
countries, shall be considered as
filed as of the day the application a. The employee, if the
was first filed in the foreign country inventive activity is not a part of
(Provided, the his
Philippine application is filed within
regular duties even if the
6 months from the filing of the employee uses the time,
foreign application). [Sec. 131.1, facilities and materials of the
RA 8293] No registration of a employer.
mark in the Philippines by a b. The employer, if the invention
 person described in is the result of the
performance

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this section shall be granted until of his regularly- assigned
such mark has been registered in duties, unless there is an
the country of origin of the agreement, express or
applicant. [Sec. 131.2, RA 8293] implied, to the contrary.
[Sec. 30.2, RA 8293]
Acquisition of ownership of
trade name Right of priority
The ownership of a trade name is An application for patent filed by any
acquired through adoption and use. person who has previously applied
Such names shall be protected, for the same invention in another
even prior to or without registration, country which by treaty, convention,
against any unlawful act committed or law affords similar privileges to
by third parties, [Sec. 165.2 (a), RA Filipino citizens, shall be considered
8293] Any subsequent use of the filed as of the date of filing the
trade name by a third party, foreign
whether as a trade name or a mark application: Provided, That:
or collective mark, or any such use
of a similar trade name or mark, a. The local application
likely to mislead the public, shall be expressly claims priority;
deemed unlawful. [Sec. 165.2 (b), b. It is filed within 12 months
RA 8293] from the date the earliest
A name or designation may not foreign
be used as a trade name: application was filed; and
c. A certified copy of the
• If by its nature or the use to foreign application together
which such name or with an
designation may be put, it is English translation is filed
contrary to public order or within 6 months from the date
morals; and of filing in the Philippines.
• If, in particular, it is liable to [Sec. 31, RA 8293]
deceive trade circles or
the
public as to the nature of the
enterprise identified by that
PIMENTEL, ERIKKA V.
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Tabular presentation of the distinctions between Trademark, Copyright and Patent
name. [Sec. 165.1, RA 8293]

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. [Sec. 165.4, RA 8293]
 DURATION Original Literary and Artistic The duration is ten (10) years The term of a patent is 20 years from
Works including Posthumous subject to indefinite renewal for the filing date of application. [Sec.
Works - Lifetime of author and for periods of ten (10) years each. 54, RA 8293]
50 years after his death [Sec.
213.1, RA 8293]

Derivative Works including

Posthumous Works – Lifetime of
author and for 50 years after his
death [Sec. 213.1, RA 8293]

Joint Authorship - Lifetime of the

last surviving author and for 50
years after his death [Sec. 213.2,
RA 8293]

Anonymous or Pseudonymous
Works - 50 years from date of
first lawful publication [Sec.
213.3, RA 8293]

Applied Art - 25 years from date of

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 making [Sec. 213.4, RA 8293]

Published Photographic Works -

50 years from publication [Sec.
213.5, RA 8293]

Unpublished Photographic Works

- 50 years from the making [Sec.
213.5, RA 8293]

Published Audio- visual Works -

50 years from publication [Sec.
213.6, RA 8293]

Unpublished Audio- visual Works

- 50 years from the making [Sec.
213.6, RA 8293]

The term of protection subsequent

to the death of the author shall run
from the date of his death or of
publication,
but such terms shall always be
deemed to begin on the first day of
January of the year following the
event which gave rise to them.
[Sec. 214, RA 8293]

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One creator – creator, his heirs,
or assigns

Joint crerator – 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

- Exception: 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.

Commissioned work – the

person commissioning owns the
work; ownership of copyright
remains with the creator, unless
there is a written stipulation to the
contrary

Audio-visual work – producer for

purposes of exhibition; for all other
purpose, the producer, the author
of scenario, the composer, the
film
PIMENTEL, ERIKKA V.
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Tabular presentation of the distinctions between Trademark, Copyright and Patent
director, the photographic director
and the author of the work are the
owners.

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, RA 8293]

Employee’s work during the

course of employment –
employer, if the result of regular
functions or duties but the employee
owns it if is not part of his duties.
 LIMITATIONS DOCTRINE OF FAIR USE Doctrine of secondary meaning. A The owner of a patent has no right to
The fair use of copyrighted work for generic or descriptive mark may later prevent third parties from performing,
criticism, news reporting, teaching acquire the characteristic of without his authorization, the acts
(including multiple copies for distinctiveness and can later be referred to in Section 71 hereof in
classroom use), research and similar registered if it acquires a meaning of the following circumstances:
purposes is not an infringement of which is different from its ordinary
copyright. [Sec. 185.1, RA 8293] connotation. For this to happen, a. Owner’s Consent:
A privilege, in persons other than the there must be continuous use for
owner of the copyright, to use the period of at least five (5) years. National exhaustion - Using a
copyrighted material in a reasonable [Sec. 132.2, RA 8293] patented product which has been
manner without his consent, put on the market in the Philippines
notwithstanding the monopoly Composite marks. Although they by the owner of the product, or with
granted to the owner by the cannot be registered by themselves, his express consent, insofar as such
copyright. It is meant to balance the generic and descriptive marks, use is performed after that product
monopolies colors has been

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enjoyed by the copyright owner with and shapes may be part of a so put on the said market;
the interests of the public and of composite mark but there should be International exhaustion (for drugs
society. a disclaimer and the person who and medicines) - A drug or medicine
Factors to consider in registers them as part of a mark will has been introduced anywhere else
determining Fair Use: not acquire ownership thereto. in the world by the patent owner, or
by any party authorized to use the
• The purpose and character of Contractions and coined marks. invention. [Sec. 72.1, RA 8293 as
the use, including whether Similarly, marks may be registered amended by RA 9502]
such use is of a commercial even if they are contractions of or
nature or is for non-profit coined from generic and descriptive b. Parallel Importation: The
educational purposes; terms. right to import the drugs and
• The nature of the copyrighted medicines shall be available
work; Arbitrary use. Generic and to any government agency or
• The amount and substantiality descriptive terms may also be any private third party; [Sec.
of the portion used in relation registered as trademarks if they are 72.1, RA 8293 as amended
to the copyrighted work as a used in an arbitrary or fanciful by RA 9502]
whole; and manner. c. Non – Commercial: Where
• The effect of the use upon the the act is done privately and
potential market value of the Duration (except that, inasmuch on a non-commercial scale or
copyrighted work as the registration of a trademark for a non-commercial
could be renewed every 10 years, purpose: Provided, That it
Decompilation – refers to the provided a Declaration of Actual does not significantly
reproduction of the code and Use is timely) submitted, a prejudice the
translation of the forms of the trademark could economic interests of the
computer program to achieve the conceivably remain owner of the patent; [Sec.
inter-operability of an independently registered forever); 72.2, RA 8293 as amended
created computer program with Territorial (except well-known by RA 9502]
other programs. This may also marks); Fair Use: The registration d. Experimental Use: Where the
constitute fair use. [Sec. 185.1, RA of the mark shall not confer on the act consists of making or
8293] registered owner the right to using exclusively for
preclude third parties from using experimental use of the
bona fide their names, addresses, invention for scientific
pseudonyms, a geographical name, purposes or educational
or exact purposes and such other
 indications concerning the kind, activities directly related to
such

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quality, quantity, destination, value, scientific or educational
place of origin, or time of production experimental use; [Sec. 72.3,
or of supply, of their goods or RA 8293 as amended by RA
services. Provided That: such use is 9502]
confined to the purposes of mere e. Drugs and Medicine: In the
identification or information; and case of drugs and medicines,
such use cannot mislead the public where the act includes testing,
as to the source of the goods or using, making or selling the
services. [Sec. 148, RA 8293] invention including any data
Prior User: A registered mark shall related thereto, solely for
have no effect against any person purposes reasonably related
who, in good faith, before the filing to the development and
date or the priority date, was using submission of information and
the mark for the purposes of his issuance of approvals by
business or enterprise. [Sec. 159.1, government regulatory
RA 8293] Non-Use: Failure to file agencies required under any
declaration of actual use law of the Philippines or of
automatically results in the denial of another country that regulates
the registration or the cancellation the manufacture, construction,
of the registration by operation of use or sale of any product:
law. [Sec. 124.2] Provided, That, in order to
protect the data submitted by
the original patent holder from
unfair commercial use
provided in Article 39.3 of the
Agreement on Trade-Related
Aspects of Intellectual
Property Rights (TRIPS
Agreement), the Intellectual
Property Office, in
consultation with the
appropriate government
agencies, shall issue the
PIMENTEL, ERIKKA V.
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appropriate rules and
regulations necessary therein
not later than 120 days after
the enactment of this law;
[Sec. 72.4, RA 8293 as
amended by RA 9502]

f. Medicine Individual Preparation:

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 shall apply after a
drug or medicine has been
introduced in the Philippines
or anywhere else in the world
by the patent owner, or by
any party authorized to use
the invention: Provided,
further, That the right to import
the drugs and medicines
contemplated in this section
shall be available to any
government agency or any
private third party; [Sec. 72.5,
RA 8293 as amended by RA
9502]

g. Where the invention is used in

 any ship, vessel, aircraft, or
land vehicle of any other
country entering the territory
of the

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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. [Sec. 72.6, RA
8293 as amended by RA
9502]

There shall be no infringement of

trademarks or trade names of
imported or sold drugs and
medicines allowed as well as
imported or sold off-patent drugs
and medicines: Provided, That said
drugs and medicines bear the
registered marks that have not been
tampered, unlawfully modified, or
infringed. [Sec.159.4 RA 8293 as
amended by RA 9502]
 RIGHTS CONFERRED Rights of Copyright Owner Rights Registration Conferred Rights Conferred by a Patent
by Registration
Works are protected by the sole Where the subject matter of a
fact of their creation, irrespective The owner of a registered mark patent is a product – to restrain,
of their mode or form of shall have the exclusive right to
expression, as well as of their prevent all third parties not prohibit and prevent any
content, quality and having the owner's consent from unauthorized person or entity from
purpose. [Sec. 172.2, RA 8293] using in the course of trade: making, using, offering for sale,
The issuance of the certificates of selling or importing
registration and deposit as
provided

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Tabular presentation of the distinctions between Trademark, Copyright and Patent
by Sec. 2, Rule 7 of the Copyright • Identical or similar signs or that product. [Sec. 71.1(a), RA 8293]
Safeguards and Regulations, are containers;
purely for recording the date of • For goods or services which Where the subject matter of a
registration and deposit of the work, are identical or similar to patent is a process – To restrain,
and are not conclusive as to those in respect of which prevent or prohibit any unauthorized
copyright ownership (nor does it the
determine the time when copyright person or entity from using the
trademark is registered;
vests). [Manly Sportwear v. • Where such use would result in process, and from manufacturing,
Dadodette Enterprises, G.R. No. a likelihood of confusion. dealing in, using, selling or offering
165306 (2005)] for sale, or importing any product
Copyright or Economic Rights Note: In case of the use of an obtained directly or indirectly from
Copyright or economic rights shall identical sign for identical goods or
consist of the exclusive right to services, a likelihood of confusion such process. [Sec. 71.1(b), RA
carry out, authorize or prevent the shall be presumed. [Sec. 147.1, RA 8293]
following acts: 8293 as amended by RA 9502]
Exception: In cases of importation Other rights of Patent Owners
• Reproduction of the work or of drugs and medicines allowed – Patent owners shall also have
substantial portion of the work; • under Section 72.1 of this Act and of the right to assign, or transfer
Dramatization, translation, off patent drugs and medicines, third
adaptation, abridgment, by
parties can import the same even
arrangement or other without the owner’s consent, succession the patent, and to
transformation of the work; provided that: conclude licensing contracts for
• The first public distribution of the same. [Sec. 71.2, RA 8293]
the original and each copy of • Said drugs and medicines bear
the work by sale or other the registered marks;
forms of transfer of ownership; • the registered marks have not
• Rental of the original or a copy been tampered, unlawfully
of: a. An audiovisual or modified, or infringed upon
cinematographic work; b. A [Sec. 147.1]
work embodied in a sound
recording; c. A computer
program; d. A compilation of
PIMENTEL, ERIKKA V.
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data and other materials or a
musical work in graphic form;
e. Irrespective of the
ownership of the original or
the copy
which is the subject of the
rental;
• Public display of the original or
a copy of the work;
• Public performance of the work;
and
• Other communication to the
public of the work. [Sec.
177, RA 8293]

Publisher’s Copyright
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, RA 8293] First Public
Distribution of Work An exclusive
right of first distribution of work
includes all acts involving
distribution, specifically including the
first importation of an original and
 each copy of the work into the
jurisdiction of the Republic of the
Philippines. [Rule 12, Copyright
Safeguards and Regulations]

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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:

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; [Sec.
193.1, RA
8293]
2. To make any alterations of
his work prior to, or to withhold
it
from publication; [Sec. 193.2,
RA 8293]
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; [Sec.
193.3, RA 8293]
 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.

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Tabular presentation of the distinctions between Trademark, Copyright and Patent
 [Sec. 193.4, RA 8293]

ASSIGNMENT OR LICENSE OF
MORAL RIGHTS
Moral Rights
cannot be assigned or licensed.
[Sec. 198, RA 8293]
General Rule: Moral rights can
be waived in writing, expressly
stating such waiver. [Sec. 195,
RA 8293] Exceptions
Even if made in writing, waiver is
still not valid if:

• Use of the name of the author,

title of his work, or his
reputation with respect to any
version or adaptation of his
work, which because of
alterations substantially tends
to injure the literary or artistic
reputation of another author;
[Sec. 195.1, RA 8293]
• It uses the name of the author
in a work that he did not
create. [Sec. 195.1, RA
8293]

The right of attribution is waived by

contribution to a collective work
unless such is expressly reserved.
[Sec. 196, RA 8293]

Right to Transfer, Assign, or

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License
The author has the right to assign or
license the copyright and/or the
material object in whole or in part,
and they allow the owner to derive
financial reward from the use of his
works by others. [Sec. 180.1, RA
8293 as amended by RA 10372]
Performer’s Rights

• 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. [Sec. 203.1, RA
8293]
• Such right shall be maintained
and exercised 50 years after
his death, by his heirs, and in
default of heirs, the
government, where protection
is claimed. [Sec. 204.2, RA
8293]
• The right of authorizing the
direct or indirect reproduction
of their performances fixed in
sound recordings, or
 audiovisual works or fixations
in any manner or form; [Sec.
203.2, RA 8293, as amended

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 by 10372]
• The right of authorizing the first
public distribution of the original
and copies of their performance
fixed in the sound recording or
audiovisual works or fixations
through sale or rental or other
forms of transfer of
ownership; [Sec. 203.3, RA
8293, as
amended by RA 10372]
Subject to the provisions of
Section 206
• The right of authorizing the
commercial rental to the public
of the original and copies of
their performances fixed in
sound recordings or
audiovisual works or
fixations, even after
distribution of them
by, or pursuant to the
authorization by the
performer; [Sec. 203.4, RA
8293, as
amended by RA 10372]
• The right of authorizing the
making available to the
public
of their performances fixed in
sound recordings or
audiovisual works or
fixations, by wire or
wireless means, in
 such a way that members of
the public may access them
from a place and time

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 individually chosen by them;
[Sec. 203.5, RA 8293, as
amended by RA 10372]
• The right to claim to be
identified as the performer of
his performances, and to
object to any distortion,
mutilation or
other modification of his
performances that would be
prejudicial to his reputation,
as regards his live aural
performances or
performances fixed in sound
recordings or
audiovisual works or
fixations; a) Exception:
Where the
omission is dictated by the
manner of the use of the
performance. [Sec. 204.1, RA
8293, as amended by RA
10372]
• The right 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,
in every communication to
the
public or broadcast of a
performance subsequent to
the first communication or
 broadcast thereof by the
broadcasting organization.

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[Sec. 206, RA 8293] a)
Unless otherwise provided in
the
contract
 INFRINGEMENT Copyright Infringement Trademark infringement Patent Infringement

Infringement of Copyright The ff. shall be liable in a civil The making, using, offering for
action for infringement: sale, selling, or importing a
The IP Code was amended to patented product or a product
expand infringement not only to • Any person who shall, without obtained directly or indirectly from
cover direct infringement but also the consent of the owner of a patented process, or the use of a
third party infringement. the registered mark, use in patented process without the
commerce any reproduction, authorization of the patentee
A person infringes a right counterfeit, copy, or colorable constitutes patent
protected under this Act when imitation of a registered mark infringement: Provided, That, this
one: or the same container or a shall not apply to instances covered
dominant feature thereof: a. by Sections 72.1 and 72.4
• Directly commits an
In connection with the sale, (Limitations of Patent Rights);
infringement;
offering for sale, distribution, Section 74 (Use of Invention by
• Benefits from the infringing
activity of another person advertising of any goods or Government); Section 93.6
who commits an services, including other (Compulsory Licensing); and
infringement if the person preparatory steps necessary Section 93-A (Procedures on
benefiting: i. Has been given to carry out the sale of any
notice of the infringing goods or services on; or b. Issuance of a Special Compulsory
activity; and ii. Has the right In License under the TRIPS
and ability to control the connection with which such use Agreement) of this Code. [Sec.
activities of the other person; 76.1, RA 8293 as

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 • With knowledge of infringing is likely to cause confusion, or amended by R.A. 9502]
activity, induces, causes or to cause mistake, or to
materially contributes to the deceive. [Sec. 155.1, RA Tests in Patent
infringing conduct of another. 8293]
Infringement a. Literal
[Sec. 216, RA 8293 as • Any person who shall, without
amended by RA 10372] the consent of the owner of the Infringement
registered mark: a. Reproduce,
It also includes the act of any counterfeit, copy or colorably In using literal infringement as a
person who at the time when test, resort must be had in the first
imitate a registered mark or a
copyright subsists in a work has in instance to the words of the claim.
dominant feature thereof; and
his To
b. apply such reproduction,
possession an article which he counterfeit, copy or colorable determine whether the particular
known, or ought to know, to be an item falls within the literal meaning
imitation to labels, signs,
infringing copy of the work for the prints, packages, wrappers, of the patent claims, the court must
purpose of: juxtapose the claims of the patent
receptacles or
advertisements, intended to and the accused product within the
a. Selling, letting for hire, or
be used in overall context of the claims and
by way of trade offering or
commerce: (i)In connection specifications, to determine whether
exposing for sale, or hire, the
with the sale, offering for there is exact identity of all material
article;
sale, distribution, or elements. [Godinez v. CA, G.R. No.
b. Distributing the article for
advertising of L 97343 (1993)]
purpose of trade, or for any
other purpose to an extent goods or services on; or (ii) In
The test is satisfied if: The item that
that will prejudice the rights connection with which such
is being sold, made or used
of the use is likely to cause
conforms exactly to the patent claim
copyright owner in the work; or confusion, or to cause
mistake, or to deceive. [Sec. of another; One makes, uses or
c. Trade exhibit of the article in sells an item that has all the
155.2, RA 8293]
public. [Sec. 217.3, RA 8293] elements of the patent claim of
 another plus other elements.
Note: The infringement takes place
at the momentany of the acts
stated in

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Tabular presentation of the distinctions between Trademark, Copyright and Patent
Subsection 155.1 or 155.2 are b. Doctrine of Equivalents
committed, regardless of whether
there is actual sale of goods or • Under the doctrine of
services using the infringing equivalents, an infringement
material. occurs when a device:
Appropriates a prior invention
A mere distributor, and not the by incorporating its
owner, cannot assert any protection innovative concept, albeit
from trademark infringement as it with some
had no right in the first place to the modification and change;
registration of the disputed • Performs substantially the
trademarks. [Superior same function in
Commercial Enterprises v. substantially the same way;
Kunnan Enterprises, G.R. No. and
169974 (2010)] • Achieves substantially the
same result. [Godinez v. CA,
Elements of trademark G.R. No. L-97343 (1993)]
infringement
The doctrine of equivalents thus
• The trademark being infringed requires satisfaction of the function
is registered in the Intellectual means-and-result test, the patentee
Property Office; however, in having the burden to show that all
infringement of trade name, three components of such
the same need not be equivalency test are met. [Smith
registered; Klein Beckman Corp. v. CA, G.R.
• The trademark or trade name is No. 126627 (2003)]
reproduced, counterfeited,
copied, or colorably imitated
by the infringer;
 • The infringing mark or trade

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 name is used in connection
with the sale, offering for
sale, or advertising of any
goods,
business or services; or the
infringing mark or trade name
is applied to labels, signs,
prints, packages, wrappers,
receptacles or
advertisements intended to
be used upon or in
connection with such goods,
business or services;
• The use or application of the
infringing mark or trade name is
likely to cause confusion or
mistake or to deceive
purchasers or others as to
the goods or services
themselves
or as to the source or origin
of such goods or services
or the
identity of such business;
• It is without the consent of the
trademark or trade name
owner or the assignee
thereof.
 [Prosource International, Inc.
vs. Horphag Research
Management S.A., G.R. No.

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180073 (2009)]

Of these, it is the element of

likelihood of confusion that is the
gravamen of trademark
infringement. [McDonald’s
Corporation v. L.C. Big Mak
Burger, Inc., et al., G.R. No.
143993 (2004)]
 REMEDIES Remedies for Infringement Damages Civil Action for Infringement

(1) An injunction restraining The owner of a registered mark Any patentee, or anyone possessing
such infringement; [Sec. may recover damages from any any right, title or interest in and to
216.1(a)] person who infringes his rights, the patented invention, whose
and the measure of the damages rights have been infringed, may
(2) Actual damages including legal suffered shall be either: bring a civil action before a court
costs and other expenses, as he of competent jurisdiction:
may have incurred due to the • The reasonable profit which the
infringement, as well as the profits complaining party would have 16. To recover from the infringer
the infringer may have made due to made, had the defendant not such damages sustained
such infringement; infringed his rights; or thereby, plus attorney’s fees
• The profit which the defendant and other expenses of
In proving profits: The plaintiff shall actually made out of the litigation, and
be required to prove sales only, and infringement; or
the defendant shall be required to • In the event such measure of 17. To secure an injunction for the
prove every element of cost which damages cannot be readily protection of his rights. [Sec.
he claims [Sec. 216.1(b)]

(3) Such damages which to the court

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shall appear to be just and shall ascertained with reasonable 76.2, RA 8293]
not be regarded as penalty, in certainty, then the court may
lieu of actual damages and award as damages – If the damages are inadequate or
profits; [Sec. 216.1(b)] cannot be readily ascertained with
A reasonable reasonable certainty, the court may
(4) Impounding during the percentage based upon award, by way of damages, a sum
pendency of the action, upon such the amount of gross equivalent to reasonable royalty.
terms and conditions as the court sales of the defendant; [Sec. 76.3, RA 8293]
may prescribe, sales invoices and or
other documents evidencing sales, The court may, according to the
all articles and their packaging The value of the circumstances of the case, award
alleged to infringe a copyright and services in connection damages in a sum above the
implements for making them; [Sec. with which the mark or amount found as actual damages
216.1(c)] trade name was used in sustained: Provided, That the
the infringement of the award does not exceed three (3)
(5) Deliver under oath for rights of the complaining times the amount of such actual
destruction without any party. [Sec. 156.1, RA damages. [Sec. 76.4, RA 8293]
compensation all 8293]
infringing copies or devices, as well Criminal Action Only After
as all plates, molds, or other means Finality of Judgment in Civil
for making such infringing copies as Action and After Repetition of
the court may order; [Sec. 216.1(d)] Infringement
If infringement is
repeated by the infringer or by
(6) Such other terms and conditions, anyone in connivance with him
including the payment of moral and after finality of the judgment of the
exemplary damages, which the court court against the infringer, the
may deem proper, wise and offenders shall:
equitable and the destruction of
infringing copies of the work even in
 the event of

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acquittal in a criminal case; 18. Be criminally liable therefor,
[Sec. 216.1(e)] and

(7) Criminal liability. 19. Upon conviction, suffer

imprisonment for the period of
not less than 6 months but
not more than 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.

Note: Such criminal action is

without prejudice to the institution
of a civil action for damages:
[Sec. 84, RA 8293]
 UNFAIR COMPETITION The following shall be guilty of unfair
competition, and shall be subject to
an action therefor: (i) Any person
who shall employ deception or any
other means contrary to good faith,
by which he shall pass off the goods

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manufactured by him or in which he
deals, or his business, or services
for those of the one having
established such goodwill; or

(ii) Any person who shall commit

any acts calculated to produce said
result. [Sec. 168.2, RA 8293]

Particular acts of unfair competition:

• Selling one’s goods and giving

them the general
appearance
of goods of another
manufacturer or dealer,
either: (i)As to the goods
themselves
or in the wrapping of the
packages in which they are
contained, or the devices or
words thereon; or (ii) 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. [Sec.

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 168.3(a), RA 8293]
• Clothing one’s 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.
[Sec. 168.3(a), RA 8293]
• Using any artifice, or device, or
employing 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. [Sec. 168.3(b), RA
8293]
• Making any false statement in
the course of trade or
committing any other act
contrary to good faith of a
nature calculated to discredit
the goods, business or
 services of another. [Sec.
168.3(c), RA

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 8293]

Elements of Unfair Competition:

• The confusing similarity may or

may not result from similarity in
the marks, but may result from
other external factors in the
packaging or presentation of
the goods.
• The intent to deceive and
defraud may be inferred from
the similarity in appearance
of the goods as offered for
sale to the public. Actual
fraudulent
intent need not be shown.
[McDonald’s Corporation v.
L.G. Big Mak Burger, Inc., et
al., G.R. No. 143993 (2004)]

Who may file an action for unfair

competition:? 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.
PIMENTEL, ERIKKA V.
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